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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/10/2023 has a typo at line 4 of the Foreign Patent Documents; the country code is missing. The Examiner believes the Applicant intended to cite WO 2012/016051 A2, because this reference matches the publication date and patentee listed in the IDS, and the Examiner has considered this reference. If Applicant intended to cite a different reference, Applicant should file an additional IDS disclosing such reference.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "112" and "602" have both been used to designate a “first filter” and reference characters "114" and "702" have both been used to designate a “second filter”, with the specification at paras. [0057-63] indicating that the overlapping reference numbers refer to the same parts. The Examiner recommends amending all instances of “602” and “702” to “112” and “114”, respectively, in the specification at [0057-63] and in Figs. 6-7, so that only one reference number is assigned to each part.
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.
Claim Interpretation
Claims 1-10 and 14-20 are directed to a “system” for cleansing vapors during inhalation from a waterpipe smoking instrument. The “waterpipe smoking instrument” and its sub-components such as the “vase” and the “bowl” are not positively recited components of the claimed system. Therefore, for purposes of this office action, in claims 1-10 and 14-20, the recited “waterpipe smoking instrument”, “vase”, and “bowl” are considered to have patentable weight only to the extent they dictate the structure of the claimed system. See MPEP 2115; see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claims 1-20 recite “acetate filter paper” . One of ordinary skill in the art would expect cellulose acetate to be typically provided as “tow” or as a “plug” when used for filtration. Applicant’s specification does not specifically define “acetate filter paper” nor distinguish such paper from other forms of acetate, but the specification at [0022] recites “two layers of cellulose acetate or similar matter” and at [0053, 0056] recites “two thin layers of plastic cellulose acetate fiber”, which suggests that “paper” simply denotes thin layers of fiber (see also 202, 204, 302, and 304 in Figs. 2-3). Additionally, the terms “paper”, “tow”, and a “plug” are each well-known in the art to describe arranged bundles of fibers. Therefore, for purposes of this office action, disclosures in the prior art of cellulose acetate tow, a cellulose acetate plug, or other arranged layers of acetate are considered to read on “acetate filter paper” under its broadest reasonable interpretation.
Claim Objections
Claims 5, 9, and 16 are objected to because of the following informalities:
Claims 5 and 16 are missing “and” to conclude their lists of components and should each recite “the male receiver configured to fit into a head of the stem; and a middle chamber”;
Claim 9 is missing “a” and should recite “a second porous film positioned towards a bottom of the second filter”.
Appropriate correction is required.
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 2, 6-10, 12-13, 16-17, and 19-20 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.
Claims 2 and 12 recite “the additives”, but claims 1 and 11 introduced “a layer of additives” in each of the “first filter” and the “second filter”, so it is unclear whether “the additives” in claims 2 and 12 refer back to the additives of the first filter, the second filter, or both. For purposes of this office action, claims 2 and 12 are interpreted as reciting both: “the additives of the first filter and the additives of the second filter comprise…”.
Claim 6 recites “the female receiver”, “the middle chamber”, and “the male receiver”, each of which lacks antecedent basis. The Examiner believes claim 6 was intended to depend from claim 5 which introduced these components (similar to claims 16-17), and claim 6 is therefore interpreted as depending from claim 5 for purposes of this office action.
Claims 7, 16, and 19 each recite “the stem” or “the stem of the waterpipe smoking instrument” which lacks antecedent basis. The claims are interpreted as reciting “a stem” or “a stem of the waterpipe smoking instrument” in each instance (it seems to the Examiner that claim 16 was intended to depend from claim 15, similar to claims 3 and 5).
Claims 8, 13, and 20 each recite “the middle” of a second filter or filter, which was not explicitly or inherently introduced and therefore lacks antecedent basis. For purposes of this office action, the claims are interpreted as reciting “a middle of the second filter” or “a middle of the filter” in each instance.
Claim 9 recites “the top” of the second filter, which was not explicitly or inherently introduced and therefore lacks antecedent basis. For purposes of this office action, the claim is interpreted as reciting “a top of the second filter”.
Claims 10 and 17 are rejected due to their dependency on claims 9 and 16, respectively.
Claim Rejections - 35 USC § 103
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 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, 3-4, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y, provided in IDS dated 02/26/2025, translation provided herewith) in view of Pracht (WO 2012/164022 A1, translation provided herewith).
Regarding claim 1, Ping is directed to a healthy hookah with filter (Title), which reads on a “system” as claimed.
The hookah includes a filter pipe 6 (“first filter”) which is located below a bowl 1 and above a water tank 4 ([0016, 0020], Fig. 1), which reads on “a first filter configured to be fitted below a bowl located vertically above a water level associated with water contained in a vase” and “wherein, in response to an inhaling action, smoke is sucked from the bowl into the vase passing via the first filter” as claimed.
The hookah includes a polypropylene fiber filter element 10 (“second filter”) which is located in a base 3 and receives smoke after traveling through the water tank 4 ([0016, 0020], Fig. 1), which reads on “a second filter configured to be fitted and located vertically below the first filter and vertically above the water level” and “wherein, in response to the inhaling action: the smoke is received in the vase, upon bypassing the second filter, to generate post-bubbling smoke upon mixing with the water in the vase, and the post-bubbling smoke is sucked from the vase passing via the second filter” as claimed.
However, Ping fails to disclose the filter pipe 6 and filter element 10 each comprising “a first layer of acetate filter paper; a second layer of acetate filter paper; and a layer of additives sandwiched between the first layer and the second layer” as claimed.
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Pracht is directed to a filter element and filter for tobacco products (Title). Pracht discloses a filter 32 with outer segments 33, 35 having an acetate-containing material 14 and a center segment 34 having activated carbon particles 24 (p. 3 fourth-to-last paragraph, p. 3 last paragraph-p. 4 first paragraph, Figs. 4 and 7), which reads on “a first layer of acetate filter paper; a second layer of acetate filter paper; and a layer of additives sandwiched between the first layer and the second layer” as claimed (compare Pracht’s Fig. 7 with Applicant’s Fig. 2 showing first and second layers 202, 204, and additive layer 206). Pracht’s arrangement advantageously provides improved filter performance, high strength and stress-resistance, and prevents inadvertent inhalation of carbon dust (Abstract, p. 2 second- and third-to-last paragraphs, p. 3 second-fourth paragraphs).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Ping by replacing each of the filter pipe 6 and filter element 10 with Pracht’s filter 32, because both Ping and Pracht are directed to filtering devices for tobacco smoke, Pracht teaches that this provides improved filter performance, high strength and stress-resistance, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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Regarding claim 3, Ping’s filter pipe 6 is “cylindrical in shape and configured to fit in an upper portion of a stem of the waterpipe smoking instrument” as claimed, as shown in Fig. 1. Pracht’s filter 32 is similarly cylindrical as shown in Fig. 7 and would be located in the same position as the filter pipe 6 in modified Ping.
Regarding claim 4, modified Ping fails to disclose the first filter 32 being “bi-conical shaped” as claimed. However, it would be obvious to form the filter 32 with a bi-conical shape because this is a mere change in shape which is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. See MPEP 2144.04(IV)(B); see also In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 7, Ping’s filter element 10 extends around the base 3 in a lower portion of a smoke rod 2, as shown in Fig. 1 [0017, 0020], which reads on “wherein the second filter is cylindrical in shape and configured to be positioned and fit in a lower portion of the stem of the waterpipe smoking instrument”, and in modified Ping the filter element 32 of Pracht would be shaped and positioned similarly. Alternatively, if modified Ping’s filter element 10 were considered not to read on the “cylindrical” shape as claimed, then this difference would be a mere change in shape which is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. See MPEP 2144.04(IV)(B); see also In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 8, Ping’s filter element 10 has a hollow middle part to allow the smoke rod 2 to extend therethrough, as shown in Fig. 1, which reads on “wherein the second filter comprises a hollow section in the middle, wherein the hollow section is configured to accommodate a suction pipe, wherein the suction pipe is connected to the vase to supply the post-bubbling smoke from the vase”, and in modified Ping the filter element 32 of Pracht would be shaped and positioned similarly.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1) as applied to claim 1, further in view of Chen (CN 106805291 A, translation provided herewith).
Pracht discloses activated carbon particles 24 as set forth above, but Ping and Pracht fail to disclose such particles 24 “saturated with antioxidants” as claimed.
Chen is directed to a kind of cigarette filter with removing free radical effect (Title). Chen discloses forming a filter medium from acetate fiber and a mixture of activated carbon and antioxidant lycopene (Abstract). This advantageously removes hazardous gaseous free radicals produced from tobacco combustion in comparison with traditional acetate fiber filter tips (Abstract).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Ping by providing a mixture of Pracht’s activated carbon particles 24 and Chen’s antioxidant lycopene (which reads on “activated carbon pellets saturated with antioxidants”) within each of the filters 32, because Ping, Pracht, and Chen are directed to filtering devices for tobacco smoke, Chen teaches that this advantageously removes hazardous gaseous free radicals produced from tobacco combustion in comparison with traditional acetate fiber filter tips, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 5-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1) as applied to claims 4 and 7, further in view of Beloni (US 2012/0180803 A1, provided in IDS dated 02/26/2025).
Regarding claim 5, modified Ping discloses the system of claim 4 as set forth above, with the modified filter pipe 6 further reading on “a middle chamber…configured to accommodate the first layer of acetate filter paper, the second layer of acetate filter paper, and the layer of additives” as recited in claim 5. However, Ping and Pracht fail to disclose the modified filter pipe 6 having “a female receiver located towards a top side of the first filter, the female receiver configured to receive a base of the bowl, to allow the base of the bowl to fit into the female receiver” and “a male receiver located towards a bottom side of the first filter, the male receiver configured to fit into a head of the stem” as claimed.
Beloni is directed to a modular smoke plenum that can be implemented in a hookah (Abstract). The modular plenum advantageously allows unlimited rearrangement and reconfiguration possibilities to a user (Abstract). The plenum may include a series of smoke filtering modules 12 ([0013, 0016, 0039-40, 0052], Figs. 1-2). An upper-most first filter module 12 is located in a smoke path below a bowl 28, connected to a smoke inlet 20, and above a down tube 22 which passes through water ([0039], Figs. 1-2). Each module 12 has a top female end 16 (“female receiver”) and a bottom male end 14 (“male receiver”) for connecting to other modules 12, the smoke inlet 20, and the smoke outlet 18 ([0025, 0039-40], Figs. 2-4). The upper first module 12 is shown connected via the male end 14 to another module 12 below it (rather than to the “head of the stem” as claimed) (Fig. 2), but the modules 12 and ends 14, 16 are interchangeable [0040] and thus the male end 14 of the upper first module 12 is also configured to fit into the smoke outlet 18 ([0039-40], Fig. 2) (which reads on “the male receiver configured to fit into a head of the stem”). One of ordinary skill in the art would recognize that Beloni’s top female end 16 and bottom male end 14 facilitate the modularity of each module 12 by allowing easy connection and detachment.
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Ping by further modifying the filter pipe 6 to include Beloni’s top female end 16 and bottom male end 14 on each end of Pracht’s filter 32, because Ping, Pracht, and Beloni are directed to devices for filtering tobacco smoke, Beloni teaches that this advantageously allows rearrangement and reconfiguration possibilities, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 6, modified Ping discloses the system of claim 5 as set forth above, but fails to disclose the modified filter pipe 6 having “a first porous film” and “a second porous film” as claimed.
Each of Beloni’s modules 12 has a screen 32 (“second porous film”) which is located between a male end 14 and a filter media 34, and supports the filter media 34 while allowing smoke to travel therethrough ([0042], Fig. 3). Beloni fails to disclose a “first porous film” between a female end 16 and the filter media 34, but providing such a screen 32 would be a mere duplication of the disclosed screen 32 which is therefore obvious in view of Beloni. See MPEP 2144.04(VI)(B); see also In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Ping by including Beloni’s screen 32 and a second screen 32 on each end of Pracht’s filter 32 between each of the top female end 16 and the bottom male end 14, for the same reasons as set forth above in claim 5 and because this would support the filter 32 while allowing smoke to travel therethrough as taught by Beloni.
Regarding claim 9, modified Ping discloses the system of claim 7 as set forth above, but fails to disclose the modified filter element 10 having “a first porous film” and “a second porous film” as claimed.
Beloni is directed to a modular smoke plenum that can be implemented in a hookah (Abstract). The modular plenum advantageously allows unlimited rearrangement and reconfiguration possibilities to a user (Abstract). The plenum may include a series of smoke filtering modules 12 ([0013, 0016, 0039-40, 0052], Figs. 1-2). Each of Beloni’s modules 12 has a screen 32 (“second porous film”) which is located between a male end 14 and a filter media 34, and supports the filter media 34 while allowing smoke to travel therethrough ([0042], Fig. 3). Beloni fails to disclose a “first porous film” between a female end 16 and the filter media 34, but providing such a screen 32 would be a mere duplication of the disclosed screen 32 which is therefore obvious in view of Beloni. See MPEP 2144.04(VI)(B); see also In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Ping by including Beloni’s screen 32 and a second screen 32 on each end of Pracht’s filter 32 between each of the top female end 16 and the bottom male end 14, because Ping, Pracht, and Beloni are directed to devices for filtering tobacco smoke, Beloni teaches that this would support the filter 32 while allowing smoke to travel therethrough, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 10, modified Ping discloses the system of claim 7 as set forth above, but fails to disclose the modified filter element 10 having “a first elastic band configured to secure and seal the second filter to a lower portion of the stem of the waterpipe smoking instrument; and a second elastic band configured to secure and seal the second filter to a head of the vase of the waterpipe smoking instrument” as claimed.
Beloni is directed to a modular smoke plenum that can be implemented in a hookah (Abstract). The modular plenum advantageously allows unlimited rearrangement and reconfiguration possibilities to a user (Abstract). The plenum may include a series of smoke filtering modules 12 ([0013, 0016, 0039-40, 0052], Figs. 1-2). Each module 12 has a standardized interface which may include a collet and o-ring [0014, 0025], which reads on a “first elastic band” and a “second elastic band” as claimed. O-rings are well-known means of connecting and sealing components.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Ping by including Beloni’s collet and o-ring on each end of the modified filter element 10, because Ping, Pracht, and Beloni are directed to devices for filtering tobacco smoke, Beloni teaches that this advantageously allows rearrangement and reconfiguration possibilities, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1).
Regarding claim 11, Ping discloses a water tank 4, a bowl 1, and a smoke rod 2 ([0017, 0020], Fig. 1), which read on a “vase”, a “bowl”, and a “stem”, respectively, as claimed. The remaining features of claim 11 are identical to those recited in claim 1, and those features are rendered obvious over Ping in view of Pracht in the same manner as set forth above in the discussion of claim 1. Thus, the claim as a whole is obvious over Ping in view of Pracht.
Regarding claim 13, the claim recites the same limitations as claim 8 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 8.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1) as applied to claim 1, further in view of Chen (CN 106805291 A).
Regarding claim 12, the claim recites the same limitations as claim 2 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 2.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1).
Regarding claim 14, the claim recites a “system” with a “first filter” with the same limitations as recited in claim 1, and the claim is similarly rendered obvious over the prior art as set forth above in the discussion of claim 1. The claim language “the smoke is received in the vase, to generate post-bubbling smoke upon mixing with the water in the vase, and the post-bubbling smoke is sucked from the vase” in response to an inhaling action (which was associated with the “second filter” in claim 1) is also rendered obvious, because Ping’s pipe filter 6 is located between the bowl 1 and water tank 4 as shown in Fig. 1.
Regarding claim 15, the claim recites the same limitations as claim 3 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 3.
Claim 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1) as applied to claim 14, further in view of Beloni (US 2012/0180803 A1).
Regarding claim 16, the claim recites the same limitations as claim 5 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 5.
Regarding claim 17, the claim recites the same limitations as claim 6 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 6.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ping (CN 201079005 Y) in view of Pracht (WO 2012/164022 A1).
Regarding claim 18, the claim recites a “system” with a “filter” with the same limitations as recited for the “second filter” of claim 1, and the claim is similarly rendered obvious over the prior art as set forth above in the discussion of claim 1.
Regarding claim 19, the claim recites the same limitations as claim 7 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 7.
Regarding claim 20, the claim recites the same limitations as claim 8 and is similarly rendered obvious over the prior art as set forth above in the discussion of claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747