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
Claim(s) 1-19 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 with traverse of Group I, claims 1-19 and Group in the reply filed on 06/11/2026 is acknowledged. The traversal is on the ground(s) that inventions I and II are all interrelated and each of the claimed inventions is using a similar structure and thus be prosecuted as one application. This is not found persuasive because the inventions are still considered to be distinct inventions as the product as claimed can be used to practice another and materially different process, as outlined in the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claim 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/11/2026.
Claim Objections
Applicant is advised that should claim 11 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 19 recites “… smoking article of Claim 1 …”, which appears to contain a typo. For examination purpose, the examiner will interpret it as “… smoking article of Claim 12 …”.
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) 1-19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by BARNEY et al. (WO 0187396 A1).
Regarding Claim 1, BARNEY et al. (WO 0187396 A1) teaches a collapsible drug delivery mask (Figure 2A, element 110) comprising a top portion having an opening (see annotated Figure 2A), a bottom portion (see annotated Figure 2A), and a body portion (Figure 2A, element 10) disposed between the top portion and the bottom portions. BARNEY et al. further teaches that the collapsible drug delivery mask is transitionable between an open state where the body is telescoped out (Figures 2A) and collapsed states (Figure 3A, [Page 8, L11-16]).
Regarding the claim limitation requiring the opening at the top portion to be configured to receive a portion of a smoking article, this feature is considered an intended use. BARNEY et al. teaches an opening (Figure 3C, element 20) that is fully capable of receiving or holding smoking article.
PNG
media_image1.png
509
658
media_image1.png
Greyscale
Annotated Figure 2A of BARNEY et al.
Regarding Claim 2, BARNEY et al. teaches the elements of claim 1.
PNG
media_image2.png
243
395
media_image2.png
Greyscale
BARNEY et al. also teaches the body portion comprises at least one curved segment (Figure 3B &C, element S2) comprising an exterior portion having a convex surface and an interior portion having a concave surface (Figure 3B &C), wherein the at least one curved segment is configured to be downwardly inverted in a direction toward the bottom portion when the device is positioned in the second configuration (see annotated Figure 3C).
Annotated Figure 3C of BARNEY et al.
Regarding Claim 3, BARNEY et al. teaches the elements of claim 1.
BARNEY et al. also teaches that the body portion (Figure 2A, element 10) comprises a plurality of segments (Figure 2A, elements S1-S4), the plurality of segments comprising: at least one curved segment (Figure 3C, element S2) comprising an exterior portion having a convex surface and an interior portion having a concave surface, wherein the at least one curved segment is configured to be downwardly inverted in a direction toward the bottom portion when the device is positioned in the second configuration (Figure 3C); and at least one ring-shaped segment perpendicularly oriented relative to a surface of the top portion (Figure 3B & C).
Regarding Claim 4, BARNEY et al. teaches the elements of claim 3.
BARNEY et al. also teaches that the mask includes two or more telescopic sections (page 2, lines 25-26). As shown in Figure 2A, the mask has a plurality of segments comprising four curved segments (elements S1-S4)) and four ring-shaped segments (elements R1-R4).
Regarding Claim 5, BARNEY et al. teaches the elements of claim 4.
BARNEY et al. also teaches in Figure 2A that the curved segments (S1-S4) and the ring-shaped segments (R1-R4) alternate along a length of the body portion (element 10).
Regarding Claim 6, BARNEY et al. teaches the elements of claim 4.
As shown in annotated Figure 8D, BARNEY et al. also teaches that a first curved segment (element S1) is positioned proximate the bottom portion. A first ring-shaped segment (element R2) is positioned adjacent to the first curved segment and has a diameter less than a diameter of the first curved segment (element S1). A second curved segment (element S2) is positioned adjacent to the first ring-shaped segment (element R2) and has a diameter less than the diameter of the first ring-shaped segment (element R2). A second ring-shaped segment (element R3) is positioned adjacent to the second curved segment (element S2) and has a diameter less than a diameter of the second curved segment. Finally, a third curved segment (element S3) is positioned adjacent to the second ring-shaped segment (element R3) and has a diameter less than the diameter of the second ring-shaped segment (see annotated Figure 8D).
PNG
media_image3.png
282
490
media_image3.png
Greyscale
Annotated Figure 8D of BARNEY et al.
Regarding Claim 7, BARNEY et al. teaches the elements of claim 1.
BARNEY et al. also teaches that the mask is collapsible to permit use in a full or partially open state (Page 2, L10-20).
Regarding Claim 8, BARNEY et al. teaches the elements of claim 1.
As shown in annotated Figure 2A, above, the collapsible mask of BARNEY et al. is tapered toward the top portion.
Regarding Claim 9, BARNEY et al. teaches the elements of claim 1.
BARNEY et al. also teaches a ridge around a perimeter of the bottom portion (see annotated Figure 2A of BARNEY et al., above).
Regarding Claim 10, BARNEY et al. teaches the elements of claim 1.
BARNEY et al. also teaches a concentric rim (Figure 3A, elements R1 & R3; page 4, lines 25-26) formed along the body when the device is in a collapsed state or configured to a small volume.
Regarding Claim 11, BARNEY et al. teaches the elements of claim 1.
BARNEY et al. also teaches that the mask is made from silicone rubber (Page 4, lines 1-3).
Regarding Claim 12, BARNEY et al. teaches a collapsible drug delivery mask (Figure 2A, element 110) comprising a top portion having an opening (see annotated Figure 2A), a bottom portion (see annotated Figure 2A), and a body portion (Figure 2A, element 10) disposed between the top portion and the bottom portions (Figure 2A).
BARNEY et al. further teaches that the body portion comprises at least one curved segment (Figure 3B & C, element S2) comprising an exterior portion having a convex surface and an interior portion having a concave surface (Figure 3B &C). As shown in annotated Figure 2A, above, the collapsible mask of BARNEY et al. is tapered toward the top portion. The collapsible drug delivery mask is transitionable between an open state where the body is telescoped out (Figures 2A) and collapsed states (Figure 3A, [Page 8, L11-16]).
BARNEY et al. also teaches that at least one curved segment is configured to be downwardly inverted in a direction toward the bottom portion when the device is positioned in the second configuration (Figure 3C).
Regarding Claim 13, BARNEY et al. teaches the elements of claim 12.
BARNEY et al. also discloses that at least one ring-shaped segment is perpendicularly oriented relative to a surface of the top portion (Figure 3B & C).
Regarding Claim 14, BARNEY et al. teaches the elements of claim 12.
BARNEY et al. also teaches that the body portion (Figure 2A, element 10) comprises a plurality of segments (Figure 2A, elements S1-S4), the plurality of segments comprising: at least one curved segment (Figure 3C, element S2) and at least one ring-shaped segment perpendicularly oriented relative to a surface of the top portion (Figure 3B & C).
Regarding Claim 15, BARNEY et al. teaches the elements of claim 14.
BARNEY et al. also teaches that the mask includes two or more telescopic sections (page 2, lines 25-26). As shown in Figure 2A, the mask has a plurality of segments comprising four curved segments (elements S1-S4)) and four ring-shaped segments (elements R1-R4) alternating along a length of the body portion (see annotated Figure 2A, above).
Regarding Claim 16, BARNEY et al. teaches the elements of claim 15.
As shown in annotated Figure 8D, above, BARNEY et al. also teaches that a first curved segment (element S1) is positioned proximate the bottom portion. A first ring-shaped segment (element R2) is positioned adjacent to the first curved segment and has a diameter less than a diameter of the first curved segment (element S1). A second curved segment (element S2) is positioned adjacent to the first ring-shaped segment (element R2) and has a diameter less than the diameter of the first ring-shaped segment (element R2). A second ring-shaped segment (element R3) is positioned adjacent to the second curved segment (element S2) and has a diameter less than a diameter of the second curved segment. Finally, a third curved segment (element S3) is positioned adjacent to the second ring-shaped segment (element R3) and has a diameter less than the diameter of the second ring-shaped segment (see annotated Figure 8D).
Regarding Claim 17, BARNEY et al. teaches the elements of claim 12.
BARNEY et al. also teaches that the mask is collapsible to permit use in a full or partially open state (Page 2, L10-20).
Regarding Claim 18, BARNEY et al. teaches the elements of claim 12.
BARNEY et al. also teaches a ridge around a perimeter of the bottom portion (see annotated Figure 2A of BARNEY et al., above).
Regarding Claim 19, BARNEY et al. teaches the elements of claim 12.
BARNEY et al. also teaches that the mask is made from silicone rubber (Page 4, lines 1-3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRADEEP PAUDEL whose telephone number is (571)429-6993. The examiner can normally be reached Mon-Thur 6:30-5:00 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, Katelyn Smith can be reached at (571) 270-5545. 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.
/PRADEEP PAUDEL/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights