CTNF 18/568,978 CTNF 86273 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-03-aia AIA Claim(s) 1, 2, 5 and 9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by JACKSON (GB 179784 A) . With respect to claim 1 ¸ JACKSON discloses a tobacco pipe cleaner (Title). The cleaner comprises a body, 1 and 4 (Page 2, lines 35-45); a guide unit 7, arranged to surround at least a portion of an outer circumferential surface of the body (Page 2, lines 45-60; Figures 2 and 3). A first remover arranged on one side of the body (e.g., 5 along with 3 and 2; Figures 2 and 3). The first remover comprising a first end portion, 2 and 3, arranged to surrounding gat least one region of one side of the body and a second end portion, 5, in one region of the body spaced apparat from the first end portion (Figure 2; Page 2, lines 35-85). With respect to claim 2 , JACKSON shows that the first and second end portions include inclined surfaces (See annotated figure 2, below). [AltContent: textbox (Longitudinal direction)] [AltContent: arrow] [AltContent: textbox (First and second inclined surfaces with respect to longitudinal direction)] [AltContent: arrow] [AltContent: arrow] PNG media_image1.png 352 102 media_image1.png Greyscale With respect to claim 5 , JACKSON shows that the first and second end portions are spaced apparat by a predefined distance (Figure 2). With respect to claim 9 , JACKSON shows that the guide body protrudes from an outer circumferential surface of the body and includes a rib (See annotated figure 2). [AltContent: textbox (Rib)] [AltContent: arrow] PNG media_image1.png 352 102 media_image1.png Greyscale Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. ____________________________________________________________________ 07-21-aia AIA Claim (s) 3, 4, 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JACKSON (GB 179784 A) . With respect to claims 3 and 4, JACKSON shows the first and second angles. However, JACKSON does not explicitly disclose the claimed angles. The courts have generally held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05, I. Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the first and second angles to the respective first and second surfaces of JACKSON, for the purposes of entering the cleaning device into the bowl and then to spread the cleaning head. The claimed angles do not appear to materially affect the operation of the device of JACKSON. With respect to claim 6 ¸ The courts have generally held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05, I. Moreover, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04, IV, A. Thus, providing the claimed gap would have been prima facie obvious to one having ordinary skill in the art for the purpose of allowing the cleaning head, 2 and 3 to fully collapse when not in use. With respect to claim 10 ¸ the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04, IV, A. Moreover, mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148. MPEP 2144.04, IV, A. Thus, the size of the diameter of the guide is prima facie obvious for the purposes of sizing the guide to the casing, 9. ______________________________________________________________________ 07-21-aia AIA Claim (s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHELAR (US 4,708,151) in view of JACKSON (GB 179784 A) . With respect to claim 13 , SHELAR discloses a pipe with replaceable cartridge (Abstract; Title) that generates aerosol (Abstract). The pipe (e.g., aerosol generating device) includes an accommodation space, 12, having an aerosol generating article, 18, accommodated in the accommodating space (Column 3, lines 39-65; Figures 1-4) and a heater, 20, to heat the aerosol generating article (Column 3, lines 39-65). SHELAR does not explicitly disclose the claimed accessory. JACKSON discloses a tobacco pipe cleaner (Title). The cleaner comprises a body, 1 and 4 (Page 2, lines 35-45); a guide unit 7, arranged to surround at least a portion of an outer circumferential surface of the body (Page 2, lines 45-60; Figures 2 and 3). A first remover arranged on one side of the body (e.g., 5 along with 3 and 2; Figures 2 and 3). The first remover comprising a first end portion, 2 and 3, arranged to surrounding gat least one region of one side of the body and a second end portion, 5, in one region of the body spaced apparat from the first end portion (Figure 2; Page 2, lines 35-85). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the accessory of JACKSON with the device of SHELAR so as to allow the user to clean the device. With respect to claim 15, The courts have generally held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05, I. Moreover, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04, IV, A. Thus, providing the claimed gap would have been prima facie obvious to one having ordinary skill in the art for the purpose of allowing the cleaning tool to fit within the bowl . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 7, 8, 11, 12 and 14 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: With respect to claim 7, the cited art does not disclose a second remover arranged on an opposite side of the body to the first remover, per se. With respect to claim 11 , the cited art does not teach or suggest the claimed protrusion extending from one region of the guide unit towards the first remover, per se. With respect to claim 14, the cited art does not explicitly disclose the claimed guide groove per se. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F. 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 Tucker can be reached at 571-272-1095. 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. /ALEX B EFTA/Primary Examiner, Art Unit 1745 Application/Control Number: 18/568,978 Page 2 Art Unit: 1745 Application/Control Number: 18/568,978 Page 3 Art Unit: 1745 Application/Control Number: 18/568,978 Page 4 Art Unit: 1745 Application/Control Number: 18/568,978 Page 5 Art Unit: 1745 Application/Control Number: 18/568,978 Page 6 Art Unit: 1745 Application/Control Number: 18/568,978 Page 7 Art Unit: 1745 Application/Control Number: 18/568,978 Page 8 Art Unit: 1745
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