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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in India on May 30, 2022. It is noted, however, that applicant has not filed a certified copy of the 202211030985 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description: “250”, “PV”, “HC”, “P1”, “P”, “D”, “L2”, “L2A”, “L2B”. Applicant is requested to thoroughly review the drawings to ensure that each element listed in the written specification is reflected in the drawing figures.
Additionally, the drawing figures contain “stray” arrows that have no association with an element number.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection |.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto- processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/322,736 (reference application) in view of Applicant’s Admitted Prior Art (AAPA). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, and dependent claim 9, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a hookah bowl assembly comprising a hookah bowl comprising a conical body, a perforated top covering an upper wide portion of the conical body with a depression creating a pocket, and a first part of a first locking mechanism at a lower narrow portion of the conical body; a tubular base comprising an upper tubular portion comprising a second part of the first locking mechanism, and a lower portion comprising a first part of a second locking mechanism; and a down stem comprising an upper portion comprising a second part of the second locking mechanism and a lower tubular portion. The claims differ in that conflicting claim 1 fails to include additional limitations directed to a hookah base which would result in the instantly claimed hookah apparatus of claims 1 and 9. However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). Consistent with the above underlined portion of the MPEP citation, attention is drawn to paragraph [0004] of the instant specification, which discloses that a typical hookah includes a hookah base with a purge valve and hose connector. 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 included the hookah bowl assembly of conflicting claim 1 in combination with the base as claimed in instant claim 1 as such would merely be consistent with conventional practice. Therefore, all elements of instant independent claim 1 and claim 9 are obvious over the conflicting claim 1 in view of the disclosure of the instant specification.
Regarding claim 2, conflicting claim 2 teaches that the first locking mechanism and the second locking mechanism are independently used to lock thread lock or O-ring type lock tubular bodies. Therefore, conflicting claim 2 includes all required components of instant claim 2.
Regarding claim 3, conflicting claim 3 teaches that the first part of the first locking mechanism is an embossed O-ring locking mechanism and the second part of the first locking mechanism is an engraved O-ring forming an O-ring locking mechanism. Therefore, conflicting claim 3 includes all required components of instant claim 3.
Regarding claim 4, conflicting claim 4 teaches that the first part of the second locking mechanism is an inner thread locking mechanism and the second part of the second locking mechanism is an outer thread forming thread locking mechanism. Therefore, conflicting claim 4 includes all required components of instant claim 4.
Regarding claim 5, conflicting claim 5 teaches that the hookah bowl, the tubular base and the down stem are made up of any material selected from metal, borosilicate glass, heat resistant rubber/polymer or any combination thereof. Therefore, conflicting claim 5 includes all required components of instant claim 5.
Regarding claim 6, conflicting claim 6 teaches that the hookah bowl is made up of silicone rubber. Therefore, conflicting claim 6 includes all required components of instant claim 6.
Regarding claim 7, conflicting claim 7 teaches that the tubular base is made up of silicone rubber and stainless steel. Therefore, conflicting claim 7 includes all required components of instant claim 7.
Regarding claim 8, conflicting claim 8 teaches that the down stem is made up of stainless steel. Therefore, conflicting claim 8 includes all required components of instant claim 8.
Regarding claim 10, 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 the tubular body of the hookah base in a circular cylindrical shape as that is typical of many conventional hookahs. Therefore, the elements of instant claim 10 are obvious over conflicting claim 1.
Regarding claims 11-12, 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 fabricated the hookah base of soda or borosilicate glass as these types of glass are conventionally used in many arts. Therefore, the elements of these claims are obvious over conflicting claim 1.
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 1, 3, 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Krupp (US. Pat. App. Pub. 2009/0084391) in view of Stein (US. Pat. App. Pub. 20160037825) and Sarian (US. Pat. App. Pub. 2021/0145047).
Regarding claim 1, Krupp teaches a hookah apparatus comprising a hookah bowl assembly (smoking apparatus; Figs. 1-3; Abstract) comprises a hookah bowl (bowl 2; [0013]) comprising:
-a conical body (Fig. 1) and a first part of a first locking mechanism (bottom opening of the bowl 3, wherein the first locking mechanism is an interference fit between bowl 3 and the top of the head 4; [0013], [0017]) at a lower narrow portion of the conical body (Fig. 1);
-a tubular base (head 5; [(0013]) comprising an upper tubular portion (top of the head 4; [0013]) comprising a second part of the first locking mechanism (interference fit between 3, 4; [0013]), and a lower portion (end of the head 6 structure 6) comprising a first part of a second locking mechanism (locking mechanism between 6 and 7 as seen in Fig. 3; [0013]); and
-a down stem (coupler 8 and tubular structure 10; [0013]) comprising an upper portion (top of the coupler 7) comprising a second part of the second locking mechanism (fit between 6,8) and a lower tubular portion (tubular structure 10).
Krupp further teaches that the hookah bowl may be any widely-available pipe bowl ([0017)), but does not further specify details of the hookah bowl; however, Stein teaches a hookah bowl (hookah bowl 5; Fig. 6; [0031]) comprising a conical body (heat resistant housing 8; [0031]), a perforated top (crucible 12 with perforated lower end 18; [0031]) covering an upper wide portion of the conical body with a depression creating a pocket (crucible 12 contains smoking material 24; [0033]), and a first part of a first locking mechanism at a lower narrow portion (lower portion 36, which may comprise a grommet; [0039]) of the conical body, which is expected to form an interference fit with a portion of the hookah 35 (Fig. 6; [0039)). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krupp by using the bowl as taught by Stein such that the bowl forms an interference fit between the bowl and the tubular base because Krupp is directed to a hookah bowl assembly comprising a hookah bowl.
Lastly, Krupp teaches a hookah base comprising a tubular body having a closed bottom and open top (Fig. 1, liquid receptacle 12). It does not further disclose first and second tubular openings protruding out from the surface of the tubular body; however, the Sarian reference discloses a hookah having a “base” which includes first and second tubular openings (Fig. 1). As such, 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 further modified the modified Krupp hookah apparatus to include these additional tubular openings in the hookah base in order to provide alternative mouthpiece and venting options for the user.
Regarding claim 3, Krupp teaches that the first locking mechanism is an interference fit between the bowl 3 and the tubular member 5 and that the second locking mechanism consists of an embossed O-ring locking mechanism and an engraved O-ring forming an O-ring locking mechanism to affix the tubular member and the down stem 8 ([0039]; see Annotated Fig. 1). Krupp does not explicitly teach that the first part of the first locking mechanism is an embossed O-ring locking mechanism and the second part of the first locking mechanism is an engraved O-ring forming an O-ring locking mechanism; however, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krupp by substituting the first locking mechanism with the O-ring lock of the second mechanism because both lock mechanism are used to affix a tubular piece to another tubular piece, and this involves substituting one alternative lock mechanism for another to yield predictable results.
Regarding claim 8, Krupp teaches that the down stem is made up of stainless steel ([0017]).
Regarding claim 9, the modified Krupp hookah apparatus teaches that the tubular base has the first and second tubular openings, the first tubular opening being a purging vent (see left tubular opening, Fig.1) and the second tubular opening being a hose connector to connect to a hose (see right tubular opening, Fig. 2).
Regarding claim 10, the modified Krupp hookah apparatus is circular cylindrical at its lower-end portion (Fig. 1, liquid receptacle 12).
Regarding claim 11, Krupp discloses that tubular base may be made/constructed of glass ([0017], liquid receptacle 12).
Regarding claim 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 fabricated the glass tubular base of the modified Krupp hookah apparatus of either soda glass as either of these types of glass are conventionally used in many arts - as indicated in the instant specification (see para. [0005]).
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Krupp and Stein as applied to claim 1 above, and further in view of Beloni (US. Pat. App. Pub. 2012/0180803).
Regarding claim 2, Krupp does not teach that the locking mechanisms are thread lock or O-ring type lock tubular bodies; however, Beloni is directed to a hookah bowl assembly (hookah 10; [0039]) comprising a hookah bowl (bowl 28; [0039]) having a first part of a first locking mechanism ([0039-0040)); a tubular base (module 12; [0040]) comprising an upper tubular portion (interface 16; [0039]) comprising a second part of the first locking mechanism and a lower portion (interface 14; [0039]) comprising a first part of a second locking mechanism; and a down stem (down tube 22; [0039]) comprising an upper portion (smoke outlet 18; [0039]) comprising a second part of the second locking mechanism ([0039]), and teaches that thread locks between the hookah bowl assembly components may help ensure that components remain connected ([0050)). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the locking mechanisms of Krupp by using thread lock type mechanisms as taught by Beloni because both Krupp and Beloni are directed to hookah bowl assemblies. Beloni teaches that thread lock mechanisms may help improve the connection of hookah bowl assembly components, and this involves substituting one alternative lock mechanism for another to yield predictable results.
Regarding claim 4, Krupp does not teach that the first part of the second locking mechanism is an inner thread locking mechanism and the second part of the second locking mechanism is an outer thread forming thread locking mechanism; however, Beloni is directed to a hookah bowl assembly (hookah 10; [0039]) which comprises a hookah bowl (bowl 28; [0039]) with a first part of a first locking mechanism ([0039-0040)); a tubular base (module 12; [0040]) comprising an upper tubular portion (interface 16; [0039]) comprising a second part of the first locking mechanism and a lower portion (interface 14; [0039]) comprising a first part of a second locking mechanism; and a down stem (down tube 22; [0039]) comprising an upper portion (smoke outlet 18; [0039]) comprising a second part of the second locking mechanism ([0039]), teaches that thread locks between the hookah bowl assembly components may help ensure that components remain connected ([0050)). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the locking mechanisms of Krupp by using thread lock type mechanisms as taught by Beloni such that that the first part of the second locking mechanism is an inner thread locking mechanism and the second part of the second locking mechanism is an outer thread forming thread locking mechanism because both Krupp and Beloni are directed to hookah bowl assemblies. Beloni teaches that thread lock mechanisms may help improve the connection of hookah bowl assembly components, and this involves substituting one alternative lock mechanism for another to yield predictable results.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Krupp and Stein as applied to claim 1 above, and further in view of Dabes (US. Pat. App. Pub. 20140026902).
Regarding claim 5, Krupp teaches that the tubular base and the down stem may be made up of metal ([0017)). Krupp is silent to the material of the hookah bowl. Dabes, directed to directed to a hookah bowl assembly (water pipe 1; [0013]) comprising a hookah bowl (tobacco head 2; [0014]) and a down stem (body tube 3; [0013]), teaches that a hookah bowl may be made from silicone rubber, as it is heat and vapor resistant ([0016], [0020)).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krupp by making the bowl from silicone rubber as taught by Dabes because both Krupp and Dabes are directed to hookah bowl assemblies, Dabes teaches that hookah bowls may be made of silicone rubber for good heat resistance, and this involves use of known material to improve a similar device in the same way. Thus, the hookah bowl, the tubular base and the down stem would be made up of any material selected from metal and heat-resistant rubber.
Regarding claim 6, Krupp is silent to the material of the hookah bowl. Dabes, directed to directed to a hookah bowl assembly (water pipe 1; [0013]) comprising a hookah bowl (tobacco head 2; [0014]) and a down stem (body tube 3; [0013]), teaches that a hookah bowl may be made from silicone rubber, as it is heat and vapor resistant ([0016], [0020)). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krupp by making the bowl from silicone rubber as taught by Dabes because both Krupp and Dabes are directed to hookah bowl assemblies, Dabes teaches that hookah bowls may be made of silicone rubber for good heat resistance, and this involves use of known material to improve a similar device in the same way.
Regarding claim 7, Krupp teaches that the tubular base 5 is made up of rubber and stainless steel ([0017)). Krupp does not explicitly teach that the rubber is silicone rubber; however, Dabes is directed to a hookah bowl assembly (water pipe 1; [0013]) comprising a hookah bowl (tobacco head 2; [0014]) and a down stem (body tube 3; [0013]), teaches that silicone rubber is a known material for hookah assemblies, as it is heat and vapor resistant ([0016], [0020)). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krupp by substituting the rubber material for silicone rubber as taught by Dabes because both Krupp and Dabes are directed to hookah bowl assemblies, Dabes teaches that hookah assemblies may use a silicone rubber material for good heat resistance, and this involves use of known material to improve a similar device in the same way.
Conclusion
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