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 .
Status of the Claims
Claims 1-7 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 9/9/26.
Claims 1 and 4 are amended.
Claims 6 and 7 are new.
Response to Amendments
In response to Applicant’s amendments filed 9/9/26, the Examiner withdraws the objection to Claim 4 for minor informalities.
Response to Arguments
Applicant’s arguments (filed 9/9/26, pages 4-5) with respect to the rejection(s) of Claims 1-5 under 35 USC § 102 have been fully considered and are persuasive in view of Applicant’s amendments to Claim 1 regarding the additional limitation of a moisture-activated adhesive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Adams (US 20210378293 A1).
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 20210378293 A1).
Regarding Claim 1, Adams discloses a tapered tip for being attached to a wrapper containing a smokeable substance (Tip 1, [0055], Fig 1), said tip comprising:
a tube having a conical frustrum shape (The tip comprises a tube having a conical frustrum shape. [0055], Figs 1A, 1B, & 1C),
having two ends forming first and second openings at opposite ends of said tube (The tip comprises two ends forming first and second openings at opposite ends of the tube. [0055], Figs 1B and 1D),
said openings fluidly connected to each other by a chamber disposed between the two ends (The first and second ends are fluidly connected to each other by a chamber disposed therebetween. [0055], Fig 1B),
the chamber and said two ends being axially aligned (The chamber and the two ends are axially aligned. [0055], Fig 1B), and
a moisture-activated adhesive to attach the wrapper to the tapered tip ("the sleeve has an adhesive applied to the end adjoining the tip, which adhesive may be moisture activated" [0058]).
Adams does not explicitly disclose wherein the moisture-activated adhesive is arranged on the tapered tip. However, given that arranging the moisture-activated adhesive on the tip merely involves rearranging the adhesive from the sleeve to the tip, the modification would be obvious to one having ordinary skill in the art. Wherein the rearrangement of the moisture activated adhesive to the tip of Adams would not have modified the operation, function, or purpose of the adhesive, a person of ordinary skill in the art would find the rearrangement/placement of the moisture activated adhesive an obvious matter of design choice. See MPEP 2144.04(VI)(C). Therefore, it follows that a person having ordinary skill in the art, through the rearrangement of the moisture activated adhesive disclosed in Adams, would arrive at the moisture-activated adhesive arranged on the tapered tip as claimed, absent evidence to the contrary.
Regarding Claim 2, Adams discloses a tip wherein the tip includes a receiving chamber having an open end (One of the ends of the tip comprises an opening designed to receive sleeve 3, which may comprise paper. [0013]-[0019], [0055], Fig 1A).
Examiner’s note: Claim 2 recites “an open end dimensioned to receive an end of a paper containing the smokeable substance, said paper being wrapped around the smokeable substance to form a conical frustrum for attaching to the tip at one end thereof” which is a recitation of intended use of the open end. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the internal channel of Adams is capable of receiving a frustoconical end of a paper containing a smokeable substance (Sleeve 3 wraps around a smokable substance, forms a conical frustrum shape, and attaches to one end of tip 1. [0054]-[0055], Fig 1A) and thus meets the claim.
Regarding Claim 3, Adams discloses a tapered tip wherein the receiving chamber extends the length of the tapered tip to the opposite end of the tip, which opposite end has an opening to allow smoke from the smokeable substance to be inhaled (The tip is hollow throughout, between the first and second open ends, which allows smoke to flow from the smokable substance, through the tip and to the user. [0055], Figs 1B and 1C).
Regarding Claim 4, Adams discloses a tip wherein the tube has a taper which extends the entire length of the tip to form the conical frustrum shape (The tip is tapered along the full length of the tip. [0020], [0055], Fig 3A).
Regarding Claim 5, Adams discloses a tip wherein the tip is made of glass (The tip may be made out of glass. [0020]-[0021]).
Regarding Claim 6, Adams discloses a tip wherein the tube has walls of uniform thickness (The walls of the tip are depicted as uniform thickness. Fig 1B).
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Adams as applied to Claim 5 above, and further in view of Lalehzadeh (US 20220000171 A1)
Regarding Claim 7, Adams discloses that the tip is made of glass ([0020]-[0021]), but does not explicitly disclose wherein the tip has heat-softened edges at each of the two ends.
However, Lalehzadeh teaches a tapered tip for being attached to a wrapper containing a smokeable substance ([0007]) comprising a glass tube having a conical frustrum shape (The tip comprises a tubular conical glass tube. [0043], [0049]-[0052], Fig 1) wherein the tip is heat-softened such that the tip has heat-softened edges at each of the two ends ("The pre-rolled tube of glass 2401 is softened using heat and/or a flame and then fed into a metal casting mold to compress the pre-rolled tube of glass 2401 into the desired tubular conical structure 101 of the mouth tip 100." [0050], Figs 23 & 24).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the glass of Adams to be heat-softened as taught by Lalehzadeh because Adams and Lalehzadeh are both directed to glass tips, Adams is silent on the method of manufacturing the glass tip, Lalehzadeh teaches the glass used in the glass tip may be heat-softened, and this merely involves applying a known component material to a similar smoking device to yield predictable results.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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