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 .
Information Disclosure Statement
It is noted that the IDS contains an extremely large number of references for consideration by the Examiner. If the applicant and/or applicant's representative are aware of any particular reference or portion of a reference in the list which the examiner should take pay particular attention to it is requested that it be specifically pointed out in response to this Office action.
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.
Claim(s) 2, 5-9, 20-24 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S Patent No. 20150027468) in view of Zuber et al. (U.S Pub. No. 20150027474).
Regarding claim 2, Li discloses a method of forming a first filter for an e-vaping section, comprising:
forming a filter material into at least one first sheet; infusing the filter material with at least one first consumable substance [0049], the at least one first consumable substance being at least one of nicotine, at least one first flavorant, or a pre-vapor formulation [0048]; Li also discloses the filter material being water insoluble (Abstract);
folding the at least one first sheet along a first length of the at least one first sheet to form at least one first folded sheet with interstices defined along the first length and containing the at least one first folded sheet, at least partially, within a containing structure [0049] and fig. 8. Li does not expressly discloses the orientation of folding, Zuber discloses forming a first filter, the first length running along a longitudinal length of the first filter such that the interstices run along the longitudinal length and are parallel to an expected direction of airflow through the first filter during an operational use for its cooling effect ([0019] [0079]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to fold the sheet in the direction taught by Zuber for its cooling property.
Regarding claim 5, Zuber discloses folding the sheet into folded portions that have same sized ridges for strength [0076] .
Regarding claim 6, it would have been obvious to one of ordinary skill in the art at the time the invention was made to arrange such that the folded portions are concentrically arranged around a central axis that runs along the longitudinal length (see In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)).
Regarding claim 7, Zuber discloses wherein the containing at least partially contains the first filter such that the containing structure contacts at least side surfaces of the first filter, the containing structure defining a first opening and a second opening on respective ends of the first filter [figs. 1-2].
Regarding claim 8, Li discloses the folding folds the sheet such that the first filter has a low resistance to draw [0042]. Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed range of a resistance-to-draw (RTD) of about 5 mm of water to 40 mm of water.
Regarding claim 9, Li discloses the forming forms the filter material to be made from at least one of paper or wood pulp [0040].
Regarding claim 20, Li discloses arranging a reservoir to be in direct fluid communication with the first filter, the reservoir containing the at least one first consumable substance [0033-0034].
Regarding claim 21, since Li discloses the reservoir can be wicked into the inner region [0033-0036]; it would have been obvious to one of ordinary skill in the art at the time the invention was made to arranging arranges at least a portion of the reservoir to include an anulus space that at least partially circumscribes the first filter to infuse the filter material with at least one first flavorant.
Regarding claim 22, Li discloses the infusing infuses the filter material with the at least one first flavorant, the at least one first flavorant being at least one of a tobacco extract or a non-tobacco flavorant [0062].
Regarding claim 23, Li discloses the forming forms such that the filter material (such as PLA etc.) is water insoluble [0040].
Regarding claim 24, Zuber discloses the at least one first folded sheet includes a plurality of folded sheets and the containing at least partially contains the plurality of folded sheets such that the interstices for each of the plurality of folded sheets is parallel to an expected direction of airflow through the first filter ([0019] see figs. 1-2 and 11a).
Regarding claim 26, Li discloses the reservoir with annulus shape (fig. 6); it would have been obvious to one of ordinary skill in the art at the time the invention was made to arrange such that the reservoir partially circumscribes the first filter (see In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)).
Claim(s) 10-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S Patent No. 20150027468) in view of Zuber et al. (U.S Pub. No. 20150027474) as applied to claim 2 above and further in view of Ryter (U.S Pub. No. 20140224268).
Regarding claim 10, Li does not expressly discloses a second filter. Ryter discloses connecting a second filter to an end of the first filter, the second filter being a non-consumable filter that is devoid of a consumable substance [0086] to further filtering function. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add the second filter as taught by Ryter.
Regarding claim 11, Ryter discloses first connecting the first filter to a first end of a flow restriction section [0086].
Regarding claim 12, Ryter discloses wherein the first connecting connects the flow restriction section such that a flow restrictor within the flow restriction section is spaced apart from the first filter [0086].
Regarding claim 13, Ryter discloses wherein the containing contains at least a part of the first filter and the flow restriction section such that a void space is defined on a first end and a second end of a flow restrictor within the flow restriction section [0086].
Regarding claim 14, Ryter discloses second connecting a second filter to a second end of the flow restriction section, the second filter being a non-consumable filter that is devoid of a consumable substance [0086].
Regarding claim 15, Ryter discloses wherein the containing at least partially contains the first filter, the second filter and the flow restriction section in the containing structure [0086].
Regarding claim 16, Ryter discloses the containing at least partially contains the first filter, the second filter and the flow restriction section in the containing structure to form an insert, the insert being configured to insert into an end of the e- vaping section [0086].
Regarding claim 17, Ryter discloses the containing at least partially contains the first filter, the second filter and the flow restriction section in the containing structure to form an insert, the insert being configured to insert into an end of the e- vaping section such that the second filter extends from the e-vaping section [0086].
Regarding claim 18, Ryter discloses the containing at least partially contains the first filter, the second filter and the flow restriction section in the containing structure, such that an internal void space is defined on a first end and a second end of a flow restrictor within the flow restriction section [0086].
Regarding claim 19, Ryter discloses the containing at least partially contains the first filter, the second filter and the flow restriction section, such that a flow restrictor within the flow restriction section is spaced apart from the first filter and the second filter [0086].
Allowable Subject Matter
Claims 3-4 are allowed.
Claims 25 is 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.
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.
Claims 2-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 17707006 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they have overlapping scope of invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 9/18/2025 have been considered but are moot in view of the new ground of rejection.
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 extension fee 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 date of this final action.
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/PHU H NGUYEN/Examiner, Art Unit 1747