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 24 is 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.
The term “small” in claim 24 is a relative term which renders the claim indefinite. The term “small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear from either claim how large or small the cottage has to be in order to satisfy the claim limitation Therefore, the scope of the term “small” cannot be determined and the claim is indefinite. For the purpose of examination, it is interpreted that cottage is a size.
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 1, 16, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwasa (JP 2016/154831A).
Regarding claim 1, Iwasa (JP 2016/154831A) teaches –
A creative ornament with a smoke effect (title), comprising an ornament main body (Figs. 2 and 3 incense burner 10), wherein
a placement position for a smoke generation element is arranged on the ornament main body (Figs. 2 and 3, incense holder 11);
a guide structure is arranged at a bottom of the placement position (the petal portion of the decorative item including the guide hole 15); and
the guide structure is configured to guide smoke to flow downwards along an outer surface of the ornament main body (par. 52);
wherein the guide structure has a through portion configured to cool and guide the smoke to flow downwards thereby preventing the smoke from rising along with surrounding air (guide hole 15; furthermore, the hole 15 is configured for this function, see MPEP 2114, II), the through portion extending in a penetrating manner at the placement position from top to bottom (fig. 3 best shows guide hole 15 extending from the placement position 11 towards another side);
wherein the guide structure is a guide through hole or guide through slot (guide hole 15 is a hole);
wherein an upper end portion of the through portion is configured to be in contact with a bottom of the smoke generation element (fig. 3 also shows this configuration);
wherein there is defined a guide groove in the outer surface of the ornament main body (guide plates 13a-c define guide grooves; par. 50);
wherein the guide groove is integrally formed in the ornament main body (figs. 2 and 3 show the groove formed from plates 13a-c);
wherein the guide groove is disposed below the through portion and is in a fluid communication with a lower end opening of the through portion (Figs. 2 and 3 show this orientation);
wherein the guide groove is distributed along the outer surface of the ornament body from top to bottom and configured to cover the outer surface of the ornament main body enabling the smoke to cover the outer surface of the ornament main body to achieve a dynamic cloud-and-mist surrounding effect (The plates 13a-c and the grooves formed thereby guide smoke around the body to cover the same; par. 49 disclose the smoke surrounding the ornament);
wherein an upper end opening of the guide groove is in a fluid communication with the lower end opening of the through portion (Figs. 2-3 show this communication);
wherein the creative ornament further comprises a gathering cavity for smoke disposed in a position of the ornament main body adjacent to a bottom of the ornament main body (retention portion 14, par. 51);
wherein a lower end opening of the guide groove is in fluid communication with the gathering cavity (Fig. 3 shows the portion 14 in communication with the guide plate 13);
wherein the gathering cavity is configured to accumulate smoke therein forming a cloud-and-mist effect and creating a visual effect resembling clouds gathering at a base of the ornament (par. 55);
wherein the guide groove further comprises a branch groove wherein an upper end opening of the branch groove is in fluid communication with the gathering cavity (particularly guide plate 13c forms a groove that reads on this limitation of a branch groove, and an upper portion thereof is in communication with the retention portion 14 when smoke flows downwards); wherein the branch groove is configured to allow the smoke to flow into the gathering cavity along the branch groove thus enhancing a mist effect (pars. 55-56).
Regarding claim 16, Iwasa further teaches the smoke effect according to claim 1, wherein the placement position is arranged at a position of the ornament main body adjacent to a top of the ornament main body (figs. 2-3 show the placement position being adjacent to the top of the body).
Regarding claim 23, Iwasa teaches –
A creative ornament with smoke effect (title, abstract), comprising
an ornament main body (Figs. 2 and 3 incense burner 10), wherein
a placement position for a smoke generation element is arranged on the ornament main body (holder 11);
a guide structure is arranged at a bottom of the placement position (flower petal forming guide hole 15); and
the guide structure is configured to guide smoke to flow downwards along an outer surface of the ornament main body (par. 52); wherein
the guide structure has a through portion configured to cool and guide the smoke to flow downwards thereby preventing the smoke from rising along with surrounding air, the through portion extending in a penetrating manner at the placement position from top to bottom (guide hole 15; pars. 52 and 55);
wherein the guide structure is a guide through hole or guide through slot (guide hole 15 is a hole);
wherein an upper end portion of the through portion is configured to be in contact with a bottom of the smoke generation element (figs. 2 and 3 show this);
wherein there is defined a guide groove in the outer surface of the ornament main body (guide plates 13a-c form guide grooves);
wherein the guide groove is integrally formed in the ornament main body (figs 2-3 show the groove being formed of the body 10);
wherein the guide groove is disposed below the through portion and is in a fluid communication with a lower end opening of the through portion (fig. 2 show the groove below the through portion);
wherein the guide groove is distributed along the outer surface of the ornament body from top to bottom and configured to cover the outer surface of the ornament main body enabling the smoke to cover the outer surface of the ornament main body to achieve a dynamic cloud-and-mist surrounding effect (par. 49, 54-55);
wherein an upper end opening of the guide groove is in a fluid communication with the lower end opening of the through portion (par. 55, the groove guides smoke from the through portion in a vertical manner);
wherein the creative ornament further comprises a gathering cavity for smoke disposed in a position of the ornament main body adjacent to a bottom of the ornament main body (retention portion 14; par. 55);
wherein a lower end opening of the guide groove is in fluid communication with the gathering cavity (figs. 2-3 show this);
wherein the gathering cavity is configured to accumulate smoke therein forming a cloud-and-mist effect and creating a visual effect resembling clouds gathering at a base of the ornament (par. 55, the smoke gathers in the portion 14);
wherein the creative ornament further comprises at least two decorative pieces that are respective disposed at two sides of the gathering cavity (Fig. 2 shows the stems below the guide plates 13a-c as being decorative, and they are distributed throughout and therefore on two sides of the retention portion 14).
Claim Rejections - 35 USC § 103
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.
Claims 21-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over by Iwasa (JP 2016/154831A).
Regarding claims 21-22 and 24, Iwasa teaches all the limitations of claims 1 and 23, but appears to be silent with regards to the main body being a rockery with mists surrounding mountains, the main body being a figure of buddha with mist surrounding the same, and the two decorative pieces including a conical laminated structure and a cottage that are disposed at two sides of the gathering cavity.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Iwasa such that it includes the claimed decorative features to arrive at the claimed invention. One would have been motivated to do so as the modification would only amount to that of an aesthetic design change, and matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. MPEP 2144.04(I). The claimed limitations would not amount to any functional difference between the prior art and the claimed invention and therefore the modification of the prior art to include the limitations would be nothing more than obvious.
Response to Arguments
Applicant's arguments filed 12/10/25 have been fully considered but they are not persuasive.
Applicant’s arguments directed towards Dobyns are not persuasive as the reference is not relied upon anywhere in this rejection.
Applicant’s arguments directed towards Iwasa with reference to claim 1 are not persuasive. Applicant argues the guide groove of Iwasa are formed from guide plates and therefore does not read on the limitation, but fails to specifically point out why the portion of the body disclosed by Iwasa is not considered to be integrally formed with the body as claimed. The portions 13a-c are formed of the body and are considered to be integral thereto.
Applicant argues Iwasa does not teach smoke covering the ornamental body, however Iwasa teaches this limitation in par. 55. Furthermore, the device disclosed by Iwasa is reasonably capable of performing the claimed function and is reasonably expected to do so. The claimed function does not result in nor require any structural difference between the claimed invention and the prior art. Therefore, the limitations of the claim are met. MPEP 2114, II.
Applicant argues the lotus petals of Iwasa do not create a surrounding effect, which similarly does not point out a structural difference between the prior art and the claimed apparatus.
Applicant argues the gathering cavity does not create a visual morphology to imitate the appearance of clouds, which similarly does not point out a structural difference between the prior art and the claimed apparatus.
Applicant argues Iwasa does not teach a branch groove, which is not persuasive as a branch groove is merely a groove extending from something, which as set forth in the rejection above, Iwasa clearly teaches.
Applicant argues Iwasa teaches a lotus-shaped tool and not an ornament of any shape, which is a difference of only ornamentation, which is not sufficient to patentably distinguish the claims from the prior art as set forth in the 103 rejections above.
Applicant argues Iwasa does not teach the through portion is configured to cool the smoke, which similarly does not point out a structural difference between the prior art and the claimed apparatus.
Applicant’s remarks directed towards claim 23 are similarly not persuasive. Iwasa discloses “decorative pieces” in the form of flower stems as shown in fig. 2.
Applicant’s remarks directed towards the Deere analysis are not persuasive because the rejection of claim 23 is not a 103 rejection and those factors do not apply.
Applicant’s remarks directed towards claim 24 are not persuasive, as the only features argued by Applicant amount to aesthetic ones. The difference between the prior art and the claimed invention amounting to “a specific scenographic storytelling” and “narrative potential” are not differences that are anything more than aesthetic design features, rather than structural features that affect the performance of the device for channeling smoke as claimed.
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.
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/BRENDAN A HENSEL/Examiner, Art Unit 1758