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 .
Response to Amendment
Amendment filed 4/20/2026 has been entered and fully considered. Claims 1, 2 and 4-20 are pending. Claim 3 is cancelled. Claim 1 is amended. No new matter is added.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
Applicant notes that because the previous 35 U.S.C. 112, new matter rejections are overcome, the claims are in condition for allowance.
Examiner notes that the scope of the claims have been broadened. Thus, further consideration of the claims is necessary.
Applicant notes that the barb of Kaye does not extend radially along the wall, as required by claim 1.
Examiner notes that Kaye is no longer cited for the barbed tip.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,064,428 in view of CHNEERSON et al. (US 2,454,631).
With respect to claim 1, U.S. Patent No. 10,064,428 claims A tobacco product tip assembly comprising: a tip portion comprising a tip wall defining an inhalation chamber; the tip portion extending into a body portion comprising a body wall defining an insertion chamber, the insertion chamber being in fluid communication with the inhalation chamber; the body wall comprising one or more barbs, said one or more barbs each having a barbed tip with two ends; each barbed tip extending inward into the insertion chamber; one of the two ends is directed outward toward the body wall and the other of the two ends is directed toward the tip portion; and wherein neither the tip wall or body wall has perforations (Claim 1).
U.S. Patent No. 10,064,428 does not explicitly disclose that the barbs are fixed to the wall and extend radially from the wall, and along the wall, into the chamber.
CHNEERSON et al. discloses a cigarette holder comprising a tip portion, 1, comprising a tip wall defining an inhalation chamber (Figures 2 and 3; See aperture extending through the tip portion); the tip portion extending into a body portion, 4, comprising a body wall (i.e., interior wall of body portion) defining a tobacco insertion chamber, the tobacco insertion chamber being in fluid communication with the inhalation chamber (Figures 2 and 3). The body wall comprises at least two mechanical fasteners, 8 fixed to and extending radially from the wall, and radially along the wall, of the body into the tobacco insertion chamber (Column 1, lines 40-55; Column 2, lines 1-20; Figures 2 and 3), in the form of a shaft.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to affix the barbs to the wall, via a shaft extending radially inwardly from, and along, the wall, as taught by CHNEERSON et al. so that the cigarette can be held within the chamber.
U.S. Patent No. 10,064,428 and CHNEERSON et al. set the general conditions for a shaft having one end affixed to the wall and the other end with a barb. The barbed tip including an extending portion that extends at an angle relative to the shaft. The angle itself is not disclosed but must lie between 0 and 180 degrees (e.g., along the direction of the shaft) for it to represent a barb.
The courts have generally held that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, 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). See, MPEP 2145.05, I.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to angle the barbed tip in an overlapping angle to the shaft, such as perpendicularly, so that the proper amount of grip is provided between the tobacco tip and tobacco product, thereby preventing the removal therefrom.
With respect to claim 2, CHNEERSON et al. discloses that the spring is flexibly attached to the body wall (Column 2, lines 1-50).
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Claims 1, 2, 4, 6, 7, 16, 17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 6 of U.S. Patent No. 10,827,780 in view of CHNEERSON et al. (US 2,454,631).
With respect to claims 1, 4, 6 and 17, U.S. Patent No. 10,827,780 claims A tobacco product tip comprising: a tip including a wall defining an inhalation chamber; a body including a wall defining a tobacco insertion chamber in fluid communication with the inhalation chamber, the wall defining the tobacco insertion chamber being configured to mechanically engage a tobacco product; and a thread-like protrusion extending from the wall of the body and into the tobacco insertion chamber, the thread-like protrusion having a height sufficient to protrude into the tobacco product and having a barbed tip that extends from the wall of the body and into the tobacco insertion chamber and that is disposed at a distal end of the tobacco insertion chamber (Claim 1).
U.S. Patent No. 10,827,780 does not specifically disclose that the barbs extend radially along the wall. . CHNEERSON et al. discloses a cigarette holder comprising a tip portion, 1, comprising a tip wall defining an inhalation chamber (Figures 2 and 3; See aperture extending through the tip portion); the tip portion extending into a body portion, 4, comprising a body wall (i.e., interior wall of body portion) defining a tobacco insertion chamber, the tobacco insertion chamber being in fluid communication with the inhalation chamber (Figures 2 and 3). The body wall comprises at least two mechanical fasteners, 8 fixed to and extending radially from the wall, and radially along the wall, of the body into the tobacco insertion chamber (Column 1, lines 40-55; Column 2, lines 1-20; Figures 2 and 3), in the form of a shaft.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to affix the barbs to the wall, via a shaft extending radially inwardly from, and along, the wall, as taught by CHNEERSON et al. so that the cigarette can be held within the chamber.
U.S. Patent No. 10,827,780 and CHNEERSON et al set the general conditions for a shaft having one end affixed to the wall and the other end with a barb. The barbed tip including an extending portion that extends at an angle relative to the shaft. The angle itself is not disclosed but must lie between 0 and 180 degrees (e.g., along the direction of the shaft) for it to represent a barb.
The courts have generally held that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, 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). See, MPEP 2145.05, I.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to angle the barbed tip in an overlapping angle to the shaft, such as perpendicularly, so that the proper amount of grip is provided between the tobacco tip and tobacco product, thereby preventing the removal therefrom.
With respect to claim 2, all materials have a flexural modulus, and thus the barbs are implicitly flexible to a degree.
Claim 7 is rejected by claim 6 of U.S. Patent No. 10,827,780.
Claim 16 is rejected by claim 1 of U.S. Patent No. 10,827,780
Claim 20 is rejected by claim 4 of U.S. Patent No. 10,827,780
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Claims 1, 2, 4-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,035,745 in view of CHNEERSON et al. (US 2,454,631).
With respect to claim 1, U.S. Patent No. 12,035,745 claims tobacco product tip assembly comprising: a tip including a first wall defining an inhalation chamber; and a body including a second wall defining a tobacco insertion chamber in fluid communication with the inhalation chamber, an inner surface of the second wall including, a first portion having a cylindrical shape; a second portion that is tapered along an axis through the body; and two or more fasteners attached to at least one of the first portion and the second portion and configured to mechanically engage a tobacco product, each of the two or more fasteners being fixed to and extending radially from the second wall and into the tobacco insertion chamber, each of the two or more fasteners having a height sufficient to protrude into the tobacco product, the two or more fasteners spaced at equal radial portions on the second wall, and at least one of the two or more fasteners including a thread-like protrusion and one or more barbs (Claim 1).
U.S. Patent No. 10,064,428 does not explicitly disclose that the barbs are fixed to the wall and extend radially from the wall into the chamber.
CHNEERSON et al. discloses CHNEERSON et al. discloses a cigarette holder comprising a tip portion, 1, comprising a tip wall defining an inhalation chamber (Figures 2 and 3; See aperture extending through the tip portion); the tip portion extending into a body portion, 4, comprising a body wall (i.e., interior wall of body portion) defining a tobacco insertion chamber, the tobacco insertion chamber being in fluid communication with the inhalation chamber (Figures 2 and 3). The body wall comprises at least two mechanical fasteners, 8 fixed to and extending radially from the wall of the body into the tobacco insertion chamber (Column 1, lines 40-55; Column 2, lines 1-20; Figures 2 and 3), in the form of a shaft.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to affix the barbs to the wall, via a shaft extending radially inwardly from the wall, as taught by CHNEERSON et al. so that the cigarette can be held within the chamber.
U.S. Patent No. 10,064,428 and CHNEERSON et al. set the general conditions for a shaft having one end affixed to the wall and the other end with a barb. The barbed tip including an extending portion that extends at an angle relative to the shaft. The angle itself is not disclosed but must lie between 0 and 180 degrees (e.g., along the direction of the shaft) for it to represent a barb.
The courts have generally held that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, 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). See, MPEP 2145.05, I.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to angle the barbed tip in an overlapping angle to the shaft, such as perpendicularly, so that the proper amount of grip is provided between the tobacco tip and tobacco product, thereby preventing the removal therefrom.
With respect to claim 2, all materials have a flexural modulus, and thus the barbs are implicitly flexible to a degree.
Claims 4 and 5 are rejected by claims 1, 3 and 5 of U.S. Patent No. 12,035,745
Claims 6 and 7 are rejected by claims 1 and 5-8 of U.S. Patent No. 12,035,745.
Claim 8 is rejected by claim 1 of U.S. Patent No. 12,035,745.
Claim 9 is rejected by claims 1 and 3 of U.S. Patent No. 12,035,745
Claim 10 is rejected by claim 1 of U.S. Patent No. 12,035,745
Claim 11 is rejected by claims 1 and 9 of U.S. Patent No. 12,035,745
Claim 12 is rejected by claims 10 of U.S. Patent No. 12,035,745.
Claim 13 is rejected by claim 1 of U.S. Patent No. 12,035,745
Claim 14 is rejected by claim 1 of U.S. Patent No. 12,035,745
Claim 15 is rejected by claim 11 and 1 of U.S. Patent No. 12,035,745. Moreover, claim 1 of U.S. Patent No. 12,035,745 does not require fasteners on the tapered portion (e.g., second portion).
Claim 16 is rejected by claim 1 of U.S. Patent No. 12,035,745
Claim 17 is rejected by claim 1 of U.S. Patent No. 12,035,745. The tapered portion represents the first end nearer to the inhalation chamber. The cylindrical portion of the insertion chamber represents the second end, which includes the barbs.
With respect to claim 18, CHNEERSON et al. discloses a cigarette holder comprising a tip portion, 1, comprising a tip wall defining an inhalation chamber (Figures 2 and 3; See aperture extending through the tip portion); the tip portion extending into a body portion, 4, comprising a body wall (i.e., interior wall of body portion) defining a tobacco insertion chamber, the tobacco insertion chamber being in fluid communication with the inhalation chamber (Figures 2 and 3). The body wall comprises at least two mechanical fasteners, 8 fixed to and extending radially from the wall of the body into the tobacco insertion chamber (Column 1, lines 40-55; Column 2, lines 1-20; Figures 2 and 3).
as seen in figure 2 of CHNEERSON et al., the tobacco insertion chamber includes a chamber having a larger diameter than the diameter of the inhalation chamber cavity diameter.
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 configuration between the first and second cavity as taught by CHNEERSON et al. for that of U.S. Patent No. 12,035,745 so that the cigarette will not pass through the inhalation chamber.
With respect to claim 20, CHNEERSON et al. shows that the second portion (See annotated figure 2, above) is conical (See also, figures 1 and 4).
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Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,035,745 in view of CHNEERSON et al., as applied to claims 1, 2, 4-18 and 20 above, and further in view of TAYLOR (US 2,685,291).
With respect to claim 19, U.S. Patent No. 12,035,745 does not explicitly disclose that the inhalation chamber has a rectangular shape. TAYLOR discloses a mouthpiece for a cigarette or cigar with a widened and substantially flat end portion to be engaged and held between the teeth of the user, to thus give a broad contact surface and prevent twisting of dislocation of the holder (Column 1, lines 1-15). The bite portion of the inhalation chamber is rectangular (Column 2, lines 25-35; Figure 5). 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 end of the tip of U.S. Patent No. 12,035,745 with a rectangular cross-section in the area of bite, as taught by TAYLOR, so that the users teeth can prevent twisting or dislocation of the holder.
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 ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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