DETAILED ACTION
Response to Arguments
Applicant’s arguments in view of amendment filed 11/24/2025 with respect to the rejections under 102 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as detailed below.
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 9 and 13 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. It is unclear if “a bottom portion” referred to in claims 9 and 13 is different from the bottom wall of claim 1. In view of the instant specification, they appear to be the same component, bottom portion 56. For examination purposes, “a bottom portion” will be interpreted as “the bottom wall”.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 9-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobson (US 2,153,623).
Regarding claim 1, Jacobson [Fig. 1-2] teaches a cigarette holder (flavor inhaler) comprising: an accommodating portion 9 that includes an opening 11 formed at one a first end and accommodates at least a part of a cigarette (flavor generating) article via the opening, wherein the accommodating portion includes: a tubular portion 9 that surrounds a circumference of the flavor generating article [page 1, col. 2, l. 21-29], and an abutting portion 17/18 that is disposed at the other a second end of the, accommodating portion inside the tubular portion, is formed of a member that is different from, the tubular portion, and abuts the flavor generating article accommodated in the accommodating portion, wherein the abutting portion 17/18 extends through an aperture 14 in a bottom wall 12 of the tubular portion and extends below the bottom wall of the tubular portion.
Regarding claim 3, Jacobson teaches a first air flow path that communicates with the flavor generating article accommodated in the accommodating portion is formed at the abutting portion [page 2, col. 1, l. l. 48-56].
Regarding claim 9, Jacobson teaches the abutting portion 17 is engaged with a the bottom wall 12 of the tubular portion formed on the other end side of the accommodating portion [Fig. 1-2].
Regarding claim 10, Jacobson teaches a support portion 5 that is engaged with the abutting portion 17 via the tubular portion [Fig. 1-2].
Regarding claim 11, Jacobson teaches partition 4 connected to support portion 5 [Fig. 1-2], which is interpreted as a rotation preventing mechanism that prevents relative rotation of the support portion with respect to the tubular portion about an axial direction of the accommodating portion as a rotation axis.
Regarding claim 12, Jacobson teaches the abutting portion forms an air layer 13 on a side opposite to an abutting surface that abuts the flavor generating article accommodated in the accommodating portion in a state where the abutting portion is engaged with the support portion [Fig. 1-2].
Regarding claim 13, Jacobson teaches the bottom wall 12 of the tubular portion formed on the second end of the accommodating portion is sandwiched between and supported by the abutting 18 portion and the support portion 5 [Fig. 1-2].
Regarding 14, the tapered end shown in Fig. 1-2 of Jacobson is a guide portion that abuts the opening of the tubular portion and guides insertion of the flavor generating article into the tubular portion 9.
Claim Rejections - 35 USC § 103
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobson as applied to claim 1 above, and further in view of Seeley (US 8,205,621).
Jacobson is silent to the material of the abutting portion. Seeley teaches a smoking device made of resin [col. 8, l. 15-21]. As this is a conventional smoking device material known in the art, it would have been obvious to one of ordinary skill in the art to use resin for the abutting portion of Jacobson to achieve predictable results. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobson as applied to claim 1 above, and further in view of Yamada (WO 2019/208536; Equivalent US 2021/0045448 used for citation).
Jacobson does not teach the claimed configuration. Yamada [Fig. 2-3] teaches a flavor inhaler wherein the tubular portion includes a contact portion 41A that comes into contact with the flavor generating article when the flavor generating article is accommodated in the accommodating portion and a separated portion 41B that is adjacent to the contact portion in a circumferential direction and is separated from the flavor generating article, and when the flavor generating article is accommodated in the accommodating portion, a second air flow path 43 that communicates with the first air flow path is formed between the separated portion and the flavor generating article [0082, 0089]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the flavor inhaler of Jacobson for the benefit of increase air flow through the device. Thus, the tubular portion has a non-cylindrical shape.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobson as applied to claim 1 above, and further in view of Divis (US 4,327,748).
Jacobson is silent to the material of the tubular portion. Divis teaches a smoking device made of metal [col. 4, l. 46-54]. As this is a conventional smoking device material known in the art, it would have been obvious to one of ordinary skill in the art to use resin for the tubular portion of Jacobson to achieve predictable results. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobson as applied to claim 1 above, and further in view of Armstrong (US 3,397,702).
Jacobson does not teach a sealing portion that seals a part between the tubular portion and the abutting portion. Armstrong teaches a smoking pipe including a sealing means around a plunger to prevent tobacco byproducts from entering [col. 6, claim 2]. It would have been obvious to one of ordinary skill in the art to include a in Jacobson a sealing portion that seals a part between the tubular portion and the abutting portion to prevent tobacco byproducts from entering.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobson as applied to claim 1 above, and further in view of Weiss (US 2013/0228190).
Jacobson does not teach a cover portion that is disposed to cover a circumference of an abutting location between the tubular portion and the guide portion. Weiss teaches an electronic cigarette sleeve to change the look and feel such as through different designs and patterns [0040, 0050]. It would have been obvious to one of ordinary skill in the art to provide such a sleeve around the tubular portion of Jacobson for the above reasons. Thus, the sleeve is a cover portion that is disposed to cover a circumference of an abutting location between the tubular portion and the guide portion.
Allowable Subject Matter
Claim 8 is 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.
The following is a statement of reasons for the indication of allowable subject matter: There is not teaching or reasonable suggestion in the prior art to modify the flavor inhaler of Jacobson as applied to claim 1 above to further include a heating portion that is disposed at an outer circumference of the tubular portion and is configured to heat the flavor generating article accommodated in the accommodating portion, wherein the abutting portion and the heating portion do not overlap each other in an axial direction of the accommodating portion.
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.
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/ERIC YAARY/Examiner, Art Unit 1755
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