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 Arguments
Applicant’s arguments regarding the rejection of independent claim 1, and those that depend therefrom, under 35 USC 102 over Li et al have been fully considered. In view of Applicant’s arguments that the internal hollow space of Li et al lacks a user-accessible opening suitable for inserting and removing a replaceable cartridge, the rejection has been withdrawn. In view of Applicant’s arguments regarding the specific internal airflow path of Lin et al and the non-identity between Lin et al’s internal vaporizer assembly and the claimed user-inserted replaceable cartridge, the rejection of independent claim 14, and those that depend therefrom, under 35 USC 102 over Lin et al has been withdrawn. However, upon further consideration, a new grounds of rejection for independent claim 1 (and those that depend therefrom), under 35 USC 103, is being presented, as well are rejections for both independent claim 1 and 14, under 35 USC 112(b), as follows:
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 1-4, 9-11, 13-16, 18-26 and 30 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.
Regarding independent claim 1, this claim recites “…for admitting air into the recess from an exterior of the smoking article...”. There is no antecedent basis for “the smoking article”. The preamble introduces “An apparatus for heating smokable material…” and subsequent clauses refer to “the apparatus”. It is unclear whether “the smoking article” refers to the apparatus per se, the replaceable cartridge, or a separate unmentioned structure.
Also, independent claim 1 recites “a recess for receiving a replaceable cartridge inserted by a user, the cartridge comprising a heating element and smokable material”. It is not clear whether “the cartridge” (and its internal heating element and smokable material) is a positively claimed structural component of the apparatus or merely intended environmental context used to define the recess.
Further, independent claim 1 recites “…wherein at least a portion of the inlet is defined between the first surface and the second surface”. The claim fails to recite what physical structure bounds or defines the remaining portion of the inlet, leaving the structural boundaries of the overall air passage vague and indefinite.
Regarding independent claim 14, this claim recites “with the seal facing the recess for contacting and compressing against the cartridge when the cartridge is received…” and “…to seal the inlet of the mouthpiece to the cartridge in use.” However, there is no proper antecedent basis for “the cartridge” as a positively claimed structural element of the apparatus. Earlier in the claim, the cartridge is only recited as part of a functional/intended use clause describing the recess (“a recess for receiving a replaceable cartridge”). It is unclear whether the apparatus itself requires the physical presence of the cartridge to meet the structural limitations of the claims (see MPEP 2173.05(e)).
Also, independent claim 14 recites, “…to seal the inlet of the mouthpiece to the cartridge in use”. The phrase “in use” creates ambiguity as to whether the claim is directed to a physical apparatus, per se. or to an operational method/state during user operation (see MPEP 2173.05(e)).
Clarification and, preferably, correction to all of the above is requested.
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 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 338 571 (hereinafter referred to as “Li et al”) in view of Blandino et al (US. Pat. App. Pub. 2017/0055580).
Regarding independent claim 1, Li et al discloses an atomizer for generating an aerosol from tobacco liquid provided in a liquid storage chamber, the atomizer having a longitudinal axis and comprising:
-a first casing portion comprising a first connector (cover (103) with threads (1033));
-a second casing portion comprising a second connector (end cover (105) with threads (1062)) that is releasably engaged with the first connector (paras. [0019]-[0026]);
-wherein the first connector comprises a first surface that faces radially inwardly toward the longitudinal axis, and the second connector comprises a second surface that faces radially outward away from the longitudinal axis;
-wherein, when engaged, the first and second connectors define an inlet (clearance/channel (111)) between the first and second connectors for admitting air into the device from an exterior of the apparatus, wherein at least a portion of the inlet is defined between the first surface and the second surface (paras. [0019]-[0026], Fig. 2).
Li et al fails to explicitly discloses that the first casing portion comprises a “recess configured for receiving a replaceable cartridge inserted by a user”; however, Blandino et al discloses an apparatus for heating smokable material comprising a body with a user-accessible opening/recess configured to removably receive a mass of smoking material (500) (read: cartridge) inserted by a user (see paras. [0128]-[0131]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to modify the receiving space/casing of Li et al to form an open, user-accessible recess configured to receive a replaceable consumable cartridge (i.e., mass of smoking material) in order to provide user convenience, eliminate messy tobacco liquid refilling, and prevent leakage during maintenance.
Regarding claim 2-3, the modified Li et al atomizer reflects each of these structural limitations of these claims.
Regarding claim 4, as shown in Figs. 1 and 2, the adjusting cover (103) may be rotated to adjust the air intake. As such, the cross-sectional area of the inlet is clearly affected (corresponding to the claimed “wherein the first and second connectors are movable relative to each other, to alter a cross-sectional area of the inlet, while maintaining engagement of the first and second connectors”).
Regarding claim 9, as stated above, the modified Li et al reference shows a cartridge (read: mass of smoking material).
Allowable Subject Matter
Claim 14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-4, 9-11, 13-16, 18-26 and 30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fails to teach and/or reasonably suggest the claimed apparatus which further includes that the cartridge (of independent claim 1) further comprises a heating element with smokeable material arranged thereon, or that an apparatus for heating smokeable material to volatilize at least one component of smokable material, of independent claim 14, has all the limitations in combination, which includes the claimed casing and mouthpiece with the claimed “seal” structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/ Primary Examiner, Art Unit 1747
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