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, 11-18, 20, 22-23, 25-28, and 30-32 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant’s election of Group I, claims 1-7, 11-18, 20, 22-23, and 25-28 in the reply filed on 7/01/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 30-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/01/2026.
Claim Objections
Claim 17 is objected to because of the following informalities:
Lines 2-3 read “such that support structure provides a core and smoking product comprises” and should instead read “such that the support structure provides a core and the smoking product comprises”.
Appropriate correction is required.
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 sign(s) mentioned in the description: Base 4 and conduit 15, as referenced on pages 11-12 in the instant specification.
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 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, 14, 18, and 28 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.
Regarding claim 2, lines 2-3 recite “the capsule comprises first and second walls”. However, it is unclear whether the first and second walls are the same as the plurality of walls in claim 1, line 4, or if they are different walls. For purposes of examination, the first and second walls are considered to be part of the plurality of walls.
Regarding claim 14, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the limitation for example, comprising one or more of: a mesh; a foam; a perforated sheet material; or a web, is considered to not be part of the claimed invention.
Regarding claim 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the limitation such as one or more of: stone; glass; ceramic; or sand is considered to not be part of the claimed invention.
Regarding claim 28, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the limitation such as a paste, is considered to not be part of the claimed invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6, 12-16, 23, and 25 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Nakash (WO2019/167038).
Regarding claim 1, Nakash discloses:
A capsule for a hookah device (tobacco capsule 1, fig. 3, page 3, last paragraph) comprising:
a smoking product comprising at least one ingredient configured to vaporise during heating of the smoking product in use (tobacco 17, page 4, first paragraph).
a housing (container 11) comprising a plurality of walls (sidewalls 14, upper surface 12, and lower surface 13, fig. 3, page 4, second paragraph) shaped to define an internal chamber containing the smoking product (figs. 3-4) and defining at least one air pathway to allow the vaporised ingredient to exit the capsule in use (airflow through the capsule 1, page 3, last paragraph); and
a support structure within the housing defining a surface area within the internal chamber away from the plurality of walls over which at least a portion of the smoking product is disposed (grid 16 that separates the container 11 to compartments that includes a quantity of tobacco, fig. 4, page 4, first paragraph), wherein the smoking product and support structure only partially fill the internal chamber (as shown in fig. 4).
Regarding claim 2, Nakash discloses where the capsule comprises first and second walls (upper surface 12 and lower surface 13), the internal chamber being between the first and second walls (figs. 3-4), wherein the first and second walls comprise at least one respective aperture therein (apertures 15, page 3, last paragraph), such that in use, air passes through the respective apertures and over the smoking product in the internal chamber (the apertures allow airflow through the capsule, page 3, last paragraph).
Regarding claim 4, Nakash discloses where the support structure is shaped to maintain a desired dispersion of the smoking product within the internal chamber (as the grid separates the tobacco into separate compartments and prevents the tobacco from being compressed into the bottom of the container, page 5, second paragraph).
Regarding claim 5, Nakash discloses where the support structure substantially spans a height and/or width dimension of the internal chamber (figs. 3-4).
Regarding claim 6, Nakash discloses where the support structure is loosely disposed within the internal chamber (as the grid 16 is positioned on steps 3, page 4, second paragraph) and movement of the support structure is constrained by contact with the plurality of walls and/or smoking product (as shown in fig. 14, grid 16 is constrained from going into the lower chamber due to the step of the plurality of walls).
Regarding claim 12, Nakash discloses where the support structure is at least partially embedded within or coated by the smoking product (as the tobacco 17 sits on top of grid 16 as shown in figs. 3-4 and therefore the grid is considered to be at least partially coated by the smoking product).
Regarding claim 13, Nakash discloses where in use the support structure is removable or displaceable from the capsule (as the grid 16 is positioned on steps 3, page 4, second paragraph) to leave an air channel within the smoking product after displacement therefrom (as removing grid 16 would also leave an air channel within the smoking product, and apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function).
Regarding claim 14, Nakash discloses where the air support structure is air-permeable (grid 16 is made of metal string with pores, page 4, second paragraph).
Regarding claim 15, Nakash discloses where the support structure comprises one or more partition shaped to define an air pathway in the form of a flow passage through the internal chamber (as the grid has pores (page 4, second paragraph) and air flows through the capsule (page 3, last paragraph)) whereby the one or more partition prevents entry of the smoking product into the flow passage (as the grid separates the tobacco into compartments (page 5, first paragraph) and thus prevents the tobacco from entry into another compartment which is also the flow passage).
Regarding claim 16, Nakash discloses where the support structure comprises a plurality of discrete elements contained within the capsule (multiple grids, fig. 14).
Regarding claim 23, Nakash discloses where the smoking product is provided in a plurality of discrete portions (tobacco 17 in compartments 111 and 112, page 3, last paragraph, and as shown in fig. 4), each of the discrete portions comprising a different effective surface area of smoking product, different cross-sectional area, or different volume to surface are ratio, such the different portions of the smoking product are consumed at different rates during heating (as there is a larger quantity of tobacco 17 in compartment 111 compared to compartment 112 as shown in fig. 4 and further the tobacco in the upper compartment burns first and then the lower compartment, page 5, second paragraph).
Regarding claim 25, Nakash discloses where the total rate of vaporised smoking product produced by the capsule remains within a predetermined margin over a predetermined time period of use (as the tobacco between the top surface to the upper grid is burned first, after that the tobacco between the grids and then after the tobacco under the lower grids. Thus, during all the smoking the user feels a burn of fresh tobacco, page 5, second paragraph).
Claim(s) 1, 7 and 11 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Bavar (CN-210143816-U, citations refer to the English translation provided).
Regarding claim 1, Bavar discloses:
A capsule for a hookah device (bowl-shaped member 502, fig. 18E, [0193])) comprising:
a smoking product comprising at least one ingredient configured to vaporise during heating of the smoking product in use (organic matter or tobacco [0197]).
a housing comprising a plurality of walls (circumferential wall 508, [0197] and bottom wall as shown in fig. 18E) shaped to define an internal chamber (chamber 504) containing the smoking product (separate chambers 504 for tobacco or other organic material, [0197]) and defining at least one air pathway to allow the vaporised ingredient to exit the capsule in use (central conduit 506, fig. 18E); and
a support structure within the housing defining a surface area within the internal chamber away from the plurality of walls over which at least a portion of the smoking product is disposed (inner wall 507 that separates compartment, [0199], fig. 18E), wherein the smoking product and support structure only partially fill the internal chamber (as shown in fig. 18E).
Regarding claim 7, Bavar discloses where the support structure comprises a partition configured to divide the internal chamber of the capsule into two or more compartments or cell (inner wall 507 that forms multiple compartments, [0199]), where the partition defines an annular internal chamber containing the smoking product (as shown in fig. 18E) and a central air pathway extending therethrough (central conduit 506, fig 18E).
Regarding claim 11, Bavar discloses where the support structure comprises a plurality of elongate arms configured to extend into the smoking product and impinge movement thereof (multiple inner walls 507, [0199]).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakash (WO2019/167038).
Regarding claim 3, Nakash does not appear to explicitly disclose that the support structure has greater mechanical strength than the smoking product. However, as the support structure is made of metal (page 4, second paragraph) and supports the tobacco product (as shown in fig. 4) and the tobacco product may be compressed from a user’s suction action during smoking (page 1), it would be obvious to one having ordinary skill in the art that grid has greater mechanical strength than the smoking product.
Claim(s) 17-18, 20, 22, and 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakash (WO2019/167038) as applied to claim 1 above, and further in view of Ebdah (US2020/0268040).
Regarding claims 17 and 26-27, Nakash does not appear to disclose where the smoking product at least partially encapsulates the support structure such that the support structure provides a core, and the smoking product comprises a coating on the core.
However Ebdah, directed to a water pipe capsule composition, teaches:
A capsule for delivery of a flavoring in water-pipe smoke ([0003]).
The capsules enable consumers to enjoy the mixology of unlimited flavors and colors by addition on top of a traditional tobacco product or by entirely replacing the tobacco ([0013]).
The capsule includes a core bead (i.e. support structure that provides a core) and a coating layer encapsulating the bead (i.e. smoking product that at least partially encapsulated the support structure and comprises a coating on the core), [0003].
The capsules ingredients comprise a binder, a mist maker, and a flavoring (coating layer includes an absorbent binder, a mist-maker, and a sweetener, [0003]), as recited in claim 26.
The capsules comprise an absorbent-binder (coating layer includes an absorbent binder, [0003), as recited in claim 27.
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art to modify Nakash to include the capsules on top of the tobacco product or entirely replace the tobacco as taught by Ebdah, as both Nakash and Ebdah are directed to hookah devices, Ebdah teaches the capsules enables consumers to enjoy the mixology of unlimited flavors, and this merely involves the incorporation of a known type of hookah smoking material to a similar hookah device to yield predictable results.
Regarding claim 18, modified Nakash further teaches where the core comprises an inert, inorganic material (Ebdah, the inert material of the core bead may be stone, sand, glass, [0004]).
Regarding claim 20, modified Nakash further teaches where the coating is substantially dry (Ebdah, the uniform blend that encapsulates the beads is free of fluid residues and prevents the surface of the capsules from being damp or sticky, [0019]).
Regarding claim 22, modified Nakash further teaches where a plurality of coated cores are provided (Ebdah, capsules, [0013]) and a further support structures (Nakash, grid 16), at least two of the coated cores being separated or constrained by the further support structure (as the capsules may be on top of the tobacco product or replace the tobacco product, and thus modified Nakash would have the capsules within the compartments 111/112 that is separated by grid 16).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakash (WO2019/167038) as applied to claim 1 above, and further in view of Fernando (US2021/0169142).
Regarding claim 28, Nakash does not appear to disclose where the smoking product comprises a viscous liquid, or semi-solid.
However, Fernando, directed to a hookah, teaches:
Aerosol-forming substrates for use with traditional shisha devices are in the form of a molasses ([0063]), which defines a viscous liquid or semi solid.
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 smoking product of Nakash to have molasses, as both Nakash and Fernando are directed to cartridges for a hookah, Fernando teaches smoking products of traditional shisha devices have molasses and Nakash is a traditional shisha device, and this merely involves incorporating a known substance of a traditional shisha device to a similar smoking product of a traditional shisha device to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights