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 .
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 49 and 50 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.
Claims 49 and 50 recites the limitation "the wall of the container". There is insufficient antecedent basis for this limitation in the claim. Independent Claim 45 only identifies “a wall of the first compartment” and “a wall of the second compartment”. No “container wall” is identified.
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.
Claims 45 and 47-51 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chamami (US 2006/0243610).
Regarding Claim 45, Chamami discloses a kit for rolling cigarettes comprising a container comprising a first compartment and a second compartment (in Figures 1 and 2 wherein the compartments are separated by a divider 60) with a first cutout (52) on a wall of the first compartment and a second cutout (52) on a wall of the second compartment. The first cutout is configured for removing one or more items from said first compartment, and wherein said second cutout is configured for removing one or more items contained within said second compartment.
Regarding Claim 47, Chamami discloses the compartment is configured to store filters, tips, or both.
Regarding Claim 48, Chamami discloses a latch (42, 44) configured to hold a cover of the container closed.
Regarding Claim 49, Chamami discloses the wall of the container is an inner wall. Chamami also discloses the partition wall may be a partial wall.
Regarding Claim 50, Chamami discloses the wall of the container is an outer wall as the cutout extends though the outermost wall of the kit.
Regarding Claim 51, Chamami discloses the first cutout and the second cutout are configured to facilitate insertion of a user's finger.
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 46 is rejected under 35 U.S.C. 103 as being unpatentable over Chamami (US 2006/0243610).
Regarding Claim 46, Chamami does not disclose the first compartment is configured to store cigarette paper. Rather, the upper compartment case section (6) is used to store cigarette paper. However, a person having ordinary skill in the art would recognize and find obvious that the compartments may be modified in size to hold specific contents as desired. Please see MPEP 2144.04 IV Section A which discusses the obviousness of changes in size, proportion, and shape.
Claims 32-42 are rejected under 35 U.S.C. 103 as being unpatentable over Chamami (US 2006/0243610) in view of de Muylder-Braun (US 5641061).
Regarding Claim 36, Chamami discloses a kit for rolling cigarettes comprising a container comprising a first compartment (62) and a second compartment (62), a divider (60) between said first compartment and said second compartment. Chamami discloses one or more slots between said first compartment and said second compartment in that the divider wall 60 may be configured as a partial wall as discussed in Paragraph 0037. Such a partial wall is would facilitate access between the divider wall and the compartments.
While Chamami discloses a partial wall, Chamami does not disclose the partial wall includes slots.
de Muylder-Braun discloses a similar tray (1) having a plurality of compartments divided by partitions (4) wherein the upper edges of the partitions are provided with semicircular handling-facilitation cutouts or slots (6). Chamami and de Muylder-Braun are analogous inventions in the art of partitioned containers with walls having lowered heights.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the divider having a partial wall of Chamami with the slotted partition wall of de Muylder-Braun as the simple substitution of one known partition wall with access means for another that would provide no unexpected results in the function of the wall to allow for better manipulation of the contents within the compartments.
Regarding Claim 37, Chamami does not disclose the first compartment is configured to store cigarette paper. Rather, the upper compartment case section (6) is used to store cigarette paper. However, a person having ordinary skill in the art would recognize and find obvious that the compartments may be modified in size to hold specific contents as desired. Please see MPEP 2144.04 IV Section A which discusses the obviousness of changes in size, proportion, and shape.
Regarding Claim 38, Chamami discloses the second compartment(62) is configured to store filters, tips, or both.
Regarding Claim 39, Chamami discloses a third compartment separated from the first compartment, the second compartment or both by one or more dividers.
Regarding Claim 40, the second divider includes partial walls which may be modified to include slots configured to facilitate access as discussed above.
Regarding Claim 41, the third compartment of Chamami is configured to store filters, tips, or both.
Regarding Claim 42, these slots are configured to facilitate insertion of a user's finger.
Regarding Claim 43, Chamami discloses the inclusion of a middle compartment that may serve as a divider that is hollow between the chambers on either side of the middle compartment.
Regarding Claim 44, the middle compartment includes an openable cover (48).
Claims 32-35 are rejected over Chamami – US PGPub 2006/0243610 in view of de Muylder-Braun – US Patent No 5,641,061) and Bilok (https://www.youtube.com/watch?v=-_8G-29cZM4).
Regarding claim 32, Chamami discloses: cigarette paper and filter (see at least paragraph [0006]) in a container; and discloses the container comprising two compartments (62, 62) separated by a divider (60).
It is noted that in paragraph [0037] Chamami explicitly discloses the compartments (62) being used to store cigarette filters.
Chamami discloses storing cigarette papers on the top case section (6). Thus, Chamami does not disclose the cigarette papers being stored on one of the compartments (62). However, Chamami discusses how the compartments (62) on bottom case section (12) can vary in number, and therefore in size. Thus, a person skilled in the art could rearrange the bottom compartments in order to fit both the filters in one compartment and the cigarette papers on another compartment, since the particular placement of the items to be carried (e.g. the cigarette papers) are held to be an obvious matter of design choice, pursuant MPEP 2144.04-VI-C.
Chamami does not disclose the divider having a cutout open to a top of the divider. de Muylder-Braun discloses a similar tray (1) having a plurality of compartments divided by partitions (4) wherein the upper edges of the partitions are provided with semicircular handling-facilitation cutouts or slots (6). Chamami and de Muylder-Braun are analogous inventions in the art of partitioned containers with walls having lowered heights. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the divider of Chamami with the slotted partition wall of de Muylder-Braun as the simple substitution of one known partition wall with access means for another that would provide no unexpected results in the function of the wall to allow for better manipulation of the contents within the compartments.
Furthermore, Chamami as modified does not explicitly disclose a method of preparing a cigarette comprising removing a sheet of said cigarette paper by inserting a finger into said cutout to lift said sheet of said cigarette paper from a stack of papers, removing one filter of said filters by inserting a finger into said cutout to lift said one filter; and wrapping said filter and tobacco in said sheet of cigarette paper.
Bilok discloses a method of preparing a cigarette comprising removing a sheet of said cigarette paper by inserting a finger into a cutout to lift said sheet of said cigarette paper from a stack of papers (approx. 0:33; there is a cutout near the center of the pouch where the stack of papers are located, and there is a cutout to access the papers), removing one filter of said filters (approx. 0:28 shows loading pouch with filters; and around 0:43 shows using one of the filters, thus it would have to be removed from the pocket before use); and wrapping said filter and tobacco in said sheet of cigarette paper (approx. 0:37).
Since as modified, Chamami will have the filter and papers on the bottom case section (12) in compartments (62), and separated by the divider (60) with a cutout, then it would have been obvious to one of ordinary skill in the art at the time the instant invention was claimed, to have used the apparatus of Chamami in a method of preparing a cigarette comprising: supplying cigarette paper and filters in a container comprising two compartments separated by a divider with a cutout open to a top of the divider; removing a sheet of said cigarette paper by inserting a finger into said cutout to lift said sheet of said cigarette paper from a stack of papers; removing one filter of said filters by inserting a finger into said cutout to lift said one filter; and wrapping said filter and tobacco in said sheet of cigarette paper, in view of the teachings of Bilok, in order to manually prepare cigarettes, in a known manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIDEON R. WEINERTH whose telephone number is (571)270-5121. The examiner can normally be reached Monday-Friday 10AM-6PM EST.
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/GIDEON R WEINERTH/Examiner, Art Unit 3736