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 Amendments
The Amendment filed 12/23/2025 has been entered. Claims 37, 47, and 51 were amended, and claims 1-36, 38, 42, and 44 were canceled. Thus, claims 37, 39-41, 43, and 45-52 are pending in the application.
Claim Objections
Claim 37 is objected to because of the following informalities: claim 37 reads “the ring-shaped body” in line 15, and is suggested to read --the ring shaped body-- (i.e. delete the hyphen) in order to more clearly reference how the limitation was originally claimed. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “connection means for reversibly connecting” in claim 37 line 5.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
According to the Applicant’s specification page 3 lines 23-26, the limitation of “connection means for reversibly connecting” in claim 37 line 5 is being interpreted as a screw connection, a form fitting connection, a bayonet connection, or an equivalent thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 47-52 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 claim 47, the limitations “an aerosol-generating device” in line 1 is confusing, as it is unclear as to whether this limitation are the same as or different from the limitations of “an aerosol-generating device” in claim 37. For the purposes of examination, it will be interpreted as the same limitation.
Regarding claim 49, the limitations “a housing” in line 2 is confusing, as it is unclear as to whether this limitation are the same as or different from the limitations of “the housing” in claim 37. For the purposes of examination, it will be interpreted as the same limitation.
Regarding claim 50, the limitation “two ring-shaped portions, wherein at least one of the ring-shaped portions is rotatably mounted with respect to the other ring-shaped portion” in lines 2-4 is confusing, as it is unclear how there can be at least one ring-shaped portion (i.e. more than one is possible) rotatably mounted to the other ring-shaped portion when only two ring-shaped portions have been claimed. In other words, the claim suggests three or more ring-shaped portions are possible when only two have been claimed, thereby confusing the scope of the claim.
Regarding claim 51, the limitations “an aerosol-generating device” in line 2 and “a removal tool” in line 4 are confusing, as it is unclear as to whether these limitation are the same as or different from the limitations of “an aerosol-generating device” in claim 37 and “a removal tool” in claim 37, respectively. For the purposes of examination, they will be interpreted as the same respective limitations.
Regarding claim 52, the limitation “the removal tool comprises a profile that corresponds to a non-circular profile of the recess of the coupling means” in lines 1-3 is confusing, as it is unclear whether this limitation is meant to be the same as or different from “the coupling means is a through-hole with a non-circular profile configured to cooperate with a corresponding profile of the removal tool” in claim 37 lines 11-12. For the purposes of examination, according to the Examiner’s best understanding of the device, it will be interpreted as the same limitation. Specifically, “a profile” in claim 52 is being interpreted to be the same as “a corresponding profile of the removal tool” in claim 37, and “a non-circular profile of the recess” in claim 52 is being interpreted to be the same as “a through-hole with a non-circular profile” in claim 37.
Any remaining claims are rejected based on their dependency on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 47-50 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 47 fails to further limit the subject matter of claim 37 from which it depends, as no new claim limitations are introduced.
Any remaining claims are rejected based on their dependency on a rejected base claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 37, 39-41, 43, 47-49, and 51-52 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2016/0227838 A1) in view of Engelhard et al. (US 2015/0061867 A1), Turner et al. (US 2012/0090628 A1), Laukowsky (US 2018/0110939 A1), and Liu (US 2016/0183594 A1).
Regarding claim 37, as best understood, Johnson discloses a component for an aerosol-generating device (ring 31 for a personal electronic vaporizer 1) (abstract; para. [0057]), the component comprising: a ring shaped body (ring 31 has a ring shaped body) (Figs. 1-3; para. [0057]); wherein the component is a ring-shaped component that is configured to be mounted at an open end of a heating chamber of the aerosol-generating device (ring 31 is ring shaped; the space for pathway 129 inside the PEV 1 for air to flow out is the heating chamber, as the air is heated by a heating plate 73 and the heated medium; ring 31 is mounted at the top of the PEV 1 where air leaves from the pathway 129, and so is at the open end of the pathway 129) (Figs. 1-7, 13; para. [0051]; para. [0057]), wherein the component is a top ring of the housing of the aerosol-generating device (ring 31 is on top of a top shell assembly 9 of the PEV 1) (Figs. 1-3; para. [0057]).
Johnson does not disclose the component is an identification component comprising a customizable surface.
However, Engelhard teaches an inhaler (Engelhard; para. [0147]) wherein a ring component is an identification component comprising a customizable surface (grip ring 422 can be different colors for identification of the dispenser) (Engelhard; Figs. 7-8; para. [0147]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Johnson ring shaped component to be an identification component comprising a customizable surface, as taught by Engelhard, for the purpose of helping to improve the aesthetics of the device as well as helping to facilitate the identification of the device (Engelhard; para. [0147]).
Johnson does not disclose a connection means for reversibly connecting the component to the aerosol-generating device.
However, Turner teaches a device for dispensing an inhalable medium (Turner; abstract; para. [0020]) including a connection means for reversibly connecting the component to the aerosol-generating device (connection between neck of section 6 and mouth of section 8 can be a releasable threadable, snap-fit, or bayonet-coupling) (Turner; Figs. 1-3; para. [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Johnson component to include a connection means for reversibly connecting the component to the aerosol-generating device, as taught by Turner, for the purpose of providing a specific suitable means to connect the component to the aerosol-generating device which allows for them the be released from each other (Turner; para. [0031]), thereby allowing for these pieces to be more easily cleaned or replaced.
Johnson does not disclose a coupling means configured to cooperate with a removal tool for mounting and removing the identification component from the aerosol-generating device, wherein the coupling means is a through-hole with a non-circular profile configured to cooperate with a corresponding profile of the removal tool, and wherein the ring-shaped body defines the through-hole.
However, Laukowsky teaches a system for administering medicament (Laukowsky; abstract) including a coupling means configured to cooperate with a removal tool for mounting and removing the identification component from the aerosol-generating device (hole 716 on the ring 713 meant to cooperate with a tool 715 for removing the ring 713 from the rest of the device; a user could have the tool 715 in the hole 716 when rotating the ring 713 on or off) (Laukowsky; Fig. 7; para. [0114]), wherein the coupling means is a hole with a non-circular profile configured to cooperate with a corresponding profile of the removal tool, and wherein the ring-shaped body defines the hole (the ring 713 defines a hole 716 on its side, the hole 716 being uniquely shaped to match a uniquely shaped tool 715) (Laukowsky; Fig. 7; para. [0114]). Moreover, Liu teaches an atomizer (Liu; abstract) wherein a hole with a non-circular profile configured to cooperate with a corresponding profile of the tool is a through-hole (first accommodation position 32 and second accommodation position 42 are both rectangular or waist-shaped through-holes for the first convex rib 51 to get through) (Liu; Figs. 1-5; paras. [0035-0036]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Johnson device to include a coupling means configured to cooperate with a removal tool for mounting and removing the identification component from the aerosol-generating device, wherein the coupling means is a through-hole with a non-circular profile configured to cooperate with a corresponding profile of the removal tool, and wherein the ring-shaped body defines the through-hole, as taught by Laukowsky, for the purpose of helping to prevent a child or an unintended user from disassembling the device (Laukowsky; para. [0114]). Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the modified Johnson device’s Laukowsky hole 716 to be a through-hole as taught by Liu, for the purpose of providing a more convenient manufacturing process (Liu; para. [0036]).
Regarding claim 39, the modified Johnson teaches wherein the customizable surface comprises a personalized appearance comprising an individual coloring (grip ring 422 can be different colors for identification of the dispenser) (Engelhard; Figs. 7-8; para. [0147]).
Regarding claim 40, the modified Johnson teaches wherein the connection means is a screw connection, a form fitting connection, or a bayonet type connection (connection between neck of section 6 and mouth of section 8 can be a releasable threadable, snap-fit, or bayonet-coupling) (Turner; Figs. 1-3; para. [0031]).
Regarding claim 41, the modified Johnson teaches wherein the connection means is configured to produce haptic feedback upon closure to confirm a locked position of the identification component (connection between neck of section 6 and mouth of section 8 can be a releasable threadable, snap-fit, or bayonet-coupling; for each of these, a user manually manipulating the connection would be able to feel when the connection is secured; for example, the user would feel the screw connection get tighter and tighter until it cannot be twisted by hand any more, thereby haptically signaling to the user the connection is secure) (Turner; Figs. 1-3; para. [0031]).
Regarding claim 43, the modified Johnson teaches wherein the coupling means are configured to allow the removal tool to transmit torque onto the identification component (hole 716 on the ring 713 meant to cooperate with a tool 715 for removing the ring 713; as the ring 713 is attached and detached with rotation, torque would have to be applied to remove it) (Laukowsky; Fig. 7; para. [0114]).
Regarding claim 47, as best understood, the modified Johnson teaches an aerosol-generating device (PEV 1) (Johnson; Figs. 1-3; abstract; para. [0057]) comprising the reversibly connectable identification component according to claim 37 (Johnson ring 31 modified by Turner to have a reversible connection) (Johnson, Figs. 1-3, para. [0057]; Turner, Figs. 1-3, para. [0031]).
Regarding claim 48, the modified Johnson teaches further comprising a connection portion configured to cooperate with the connection means of the identification component (the modified Johnson device would have a connection portion on top shell 9 configured to cooperate with the ring 31 as modified by Turner to have a releasable threadable, snap-fit, or bayonet-coupling; for example, the modified Johnson top shell 9 would have a complementary threaded portion to receive the ring 31 threaded portion) (Johnson, Figs. 1-3, para. [0057]; Turner, Figs. 1-3, para. [0031]).
Regarding claim 49, as best understood, the modified Johnson teaches further comprising a housing defining a cavity extending from a proximal end of the housing, wherein the identification component is configured to be mounted at the proximal end of the housing (top shell assembly 9 defines a space extending from its top end 39 for air to flow down through; ring 31 is mounted on the top end 39 of a top shell assembly 9) (Johnson; Figs. 1-3, 13; para. [0033]; para. [0057]), wherein one or more air inlets are formed at the proximal end of the housing (primary intake opening 35 and secondary intake opening 37 at the top end 39 of top shell 9) (Johnson; Figs. 1-3, 13; para. [0033]), and wherein the identification component is further configured to adjust a flow cross-sectional area of the one or more air inlets (ring 31 is selectively rotatable to adjust how much area of the primary intake opening 35 and/or secondary intake opening 37 is exposed, and thereby adjust the pressure and airflow through the intake openings 35, 37) (Johnson; Figs. 1-3, 13; para. [0057]).
Regarding claim 51, as best understood, the modified Johnson teaches a system, comprising: an aerosol-generating device (PEV 1) (Johnson; Figs. 1-3; abstract; para. [0057]) comprising the reversibly connectable identification component according to claim 37 (Johnson ring 31 modified by Turner to have a reversible connection) (Johnson, Figs. 1-3, para. [0057]; Turner, Figs. 1-3, para. [0031]); and a removal tool configured to mount and to remove the identification component from the aerosol-generating device (tool 715 for removing the ring 713 from the rest of the device; a user could have the tool 715 in the hole 716 when rotating the ring 713 on or off) (Laukowsky; Fig. 7; para. [0114]).
Regarding claim 52, as best understood, the modified Johnson teaches wherein the removal tool comprises a structure having a profile that corresponds to a non-circular profile of the recess of the coupling means (hole 716 on the ring 713 is uniquely shaped to match a uniquely shaped tool 715 structure) (Laukowsky; Fig. 7; para. [0114]).
Claims 45-46 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Engelhard, Turner, Laukowsky, and Liu as applied to claims 37 and 47 above, and further in view of Chen (US 2018/0289058 A1).
Regarding claim 45, the modified Johnson teaches the invention as previously claimed, but does not teach wherein the identification component includes a sealing member.
However, Chen teaches an atomizer (Chen; abstract) wherein the component includes a sealing member (sealing gasket 166 between an inner tube 164 and outer tube 162 at the connecting holes 162a, 162b) (Chen; Fig. 6; para. [0028]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the modified Johnson identification component to include a sealing member, as taught by Chen, for the purpose of helping the connection between the components more reliable and provide a better sealing effect (Chen; para. [0028]).
Regarding claim 46, the modified Johnson teaches wherein the sealing member is a resilient sealing member (sealing gasket 166 is made of flexible rubber or silicon, and so would be resilient) (Chen; Fig. 6; para. [0028]).
Regarding claim 50, as best understood, the modified Johnson teaches the invention as previously claimed, but does not teach wherein the identification component comprises two ring-shaped portions, wherein at least one of the ring-shaped portions is rotatably mounted with respect to the other ring-shaped portion, and wherein the flow cross-sectional area of the one or more air inlets is adjusted by rotation of the rotatably mounted ring-shaped portion.
However, Chen further teaches including two ring-shaped portions, wherein at least one of the ring-shaped portions is rotatably mounted with respect to the other ring-shaped portion, and wherein the flow cross-sectional area of the one or more air inlets is adjusted by rotation of the rotatably mounted ring-shaped portion (connecting sleeve 190 and mouthpiece 180 are ring shaped portions that are relatively rotatably mounted to each other, such that rotating the mouthpiece 180 changes the coincident area of the adjusting opening 184a and air inlet 192, thereby adjusting the amount of air flow) (Chen; Fig. 7; paras. [0030-0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the modified Johnson identification component to include two ring-shaped portions, wherein at least one of the ring-shaped portions is rotatably mounted with respect to the other ring-shaped portion, and wherein the flow cross-sectional area of the one or more air inlets is adjusted by rotation of the rotatably mounted ring-shaped portion, as taught by Chen, for the purpose of providing a specific suitable mechanism for adjusting the amount of air flow which one of ordinary skill in the art could feasibly expect to perform reasonably well, and which can help to simplify the structure and reduce cost (Chen; Fig. 7; para. [0031]).
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
On page 14 in the “Objection to the Drawings” and “Objection to the Specification” sections of the Applicant’s remarks, the Applicant argues that the drawings and specification have been amended to overcome he drawing and specification objections of the previous office action. The Examiner agrees, and has thus withdrawn those objections.
On page 15 in the second and third paragraphs of the Applicant’s remarks, the Applicant argues that one of ordinary skill in the art would recognize the limitation of “the identification component is a ring-shaped component” to mean the identification component has an overall ring shape, this being a different limitation from comprising a ring-shaped body, and so is not indefinite. The Examiner agrees, and has thus withdrawn the 35 U.S.C. 112(b) rejection of claim 37.
On page 15 in the fourth paragraph of the Applicant’s remarks, the Applicant argues that the cancellation of claim 47 renders the 35 U.S.C. 112(b) rejections of the previous office action moot. However, the Examiner respectfully disagrees, as the claim 47 has not yet been cancelled. Thus, the 35 U.S.C. 112(b) rejections are being maintained as detailed above.
On page 16 in the second paragraph of the Applicant’s remarks, the Applicant argues that the two ring-shaped portions in claim 50 are in addition to the ring-shaped body, and so that limitation is not indefinite. The Examiner agrees, and has thus withdrawn the 35 U.S.C. 112(b) rejection of claim 50 with regards to that specific limitation.
On page 16 in the third paragraph of the Applicant’s remarks, the Applicant argues that one of ordinary skill in the art would recognize “wherein at least one of the ring-shaped portions is rotatably mounted with respect to the other ring-shaped portion” in claim 50 lines 3-4 to mean either one of the ring-shaped portions or both are rotatably mounted with respect to another, and so is not indefinite. However, the Examiner respectfully disagrees. The way the claim is written, specifically “at least one” limitation, is confusing as it suggests more than one ring-shaped portion can be rotatably mounted with respect to the other ring-shaped portion while only two ring-shaped portions have been claimed, thereby confusing the scope of the Applicant’s claimed invention. The Examiner suggests the phrase “at least one of” to instead read --one of-- in order to avoid such confusion. Thus, this 35 U.S.C. 112(b) rejection of claim 50 is being maintained as detailed above.
On page 17 in the “Rejection under 35 U.S.C. 112(d)” section of the Applicant’s remarks, the Applicant argues that the cancellation of claim 47 renders the 35 U.S.C. 112(d) rejections of the previous office action moot. However, the Examiner respectfully disagrees, as the claim 47 has not yet been cancelled. Thus, the 35 U.S.C. 112(d) rejections are being maintained as detailed above.
On page 18 in the second paragraph of the Applicant’s remarks, the Applicant argues that the current prior art of record does not teach the through-hole with the additional functionalities of enabling the insertion of an aerosol-generating article into the heating chamber and acting as an air outlet, and so cannot teach the Applicant’s invention. However, the Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the through-hole with the additional functionalities of enabling the insertion of an aerosol-generating article into the heating chamber and acting as an air outlet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the current prior art of record can still be used to teach the Applicant’s invention as currently claimed.
On page 18 in the third paragraph of the Applicant’s remarks, the Applicant argues that none of the Johnson, Engelhard, Turner, or Chen references teaches a coupling means configured to cooperate with a corresponding tool as claimed, and thus cannot be used to teach the Applicant’s claimed invention. However, the Examiner respectfully disagrees. The Examiner has not used the Johnson, Engelhard, Turner, or Chen references to teach that claimed limitation, and so this argument is moot. Rather, the Laukowsky and Liu references have been used as detailed in the 35 U.S.C. 103 rejection of claim 37 above. Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 18 in the last paragraph to page 19 in the second paragraph of the Applicant’s remarks, the Applicant argues that Laukowsky hole 716 is not formed by a ring-shaped body of ring 713 as it is on the ring 713 exterior, nor the hole 716 as a though-hole, and thus teaches away from the Applicant’s claimed invention. However, the Examiner respectfully disagrees. Firstly, the Applicant’s claimed invention does not preclude the location of the through-hole from being on the exterior side of the ring-shaped body, and so Laukowsky can still be used to teach the Applicant’s invention as currently claimed. Secondly, the Applicant’s arguments with respect to Laukowsky not teaching the newly amended through-hole limitation have been considered, but are moot in view of new grounds of rejection with the new additional Liu reference being used in the current rejection as discussed above. Thus, the current prior art of record can be used to teach the newly amended claim 37.
On page 19 in the last paragraph of the Applicant’s remarks, the Applicant argues that the combination of prior art requires improper hindsight reasoning. However, the Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 20 in the second paragraph to page 21 in the first paragraph of the Applicant’s remarks, the Applicant argues that the only way the rejections could have been formulated is with knowledge from the Applicant’s disclosure, as they are not predictable to a person of ordinary skill in the art. However, the Examiner respectfully disagrees. For each modification with the current prior art of record, the Examiner uses motivation drawn from a respective teaching reference (e.g. “…as taught by Engelhard, for the purpose of helping to improve the aesthetics of the device as well as helping to facilitate the identification of the device (Engelhard; para. [0147])”). In doing so, the modifications made to teach the Applicant’s claimed invention use reasoning from the respective teaching reference which one of ordinary skill in the art could have found predictable, not improper hindsight reasoning from the Applicant’s disclosure. Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 21 in the second and third paragraphs of the Applicant’s remarks, the Applicant argues that the Examiner did not articulate a finding that there was a reasonable expectation of success for the combination of the cited references, and thus the combination of references is not obvious. However, the Examiner respectfully disagrees. According to the MPEP 2143.02(I), “The reasonable expectation of success requirement refers to ‘the likelihood of success’ in combining or modifying prior art disclosures to meet the limitations of the claimed invention… See MPEP § 2143 for guidance on rationales for modifying or combining the prior art… reasonable expectation of success can be implicitly shown via the prior art teachings or as part of the obviousness analysis”. According to the MPEP 2143(I), there are a number of rationales that can be used by the Examiner to support a conclusion of obviousness, such as “(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention”. When using such rationales, as the Examiner has in the current and previous office action, there is a reasonable expectation of success implicitly shown via the prior art teachings. Thus, the current combination of references can still be used in the 35 U.S.C. 103 rejections of the Applicant’s claim invention as detailed above.
On page 22 in the second and third paragraphs of the Applicant’s remarks, the Applicant argues that there is no motivation to combine the cited references and so there is no reasonable expectation of success. However, the Examiner respectfully disagrees. As previously explained above, for each modification with the current prior art of record, the Examiner uses motivation drawn from a respective teaching reference (e.g. “…as taught by Engelhard, for the purpose of helping to improve the aesthetics of the device as well as helping to facilitate the identification of the device (Engelhard; para. [0147])”), and as such provides a motivation for the combination of references with an implicit reasonable expectation of success for such modifications based on the teachings of the prior art. Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 22 in the last paragraph to page 23 in the first paragraph of the Applicant’s remarks, the Applicant argues that modifying a reference to fill in gaps in another reference is based on the Examiner’s prior art search, and so requires a baseline knowledge of the Applicant’s claimed invention, thereby involving improper hindsight reasoning. However, the Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 23 in the second and third paragraphs of the Applicant’s remarks, the Applicant argues that the Examiner’s combination of references does not provide a teaching for every element in the Applicant’s claim language. However, the Examiner respectfully disagrees. The Examiner has addressed all of the elements of the Applicant’s claim limitations, as detailed in the 35 U.S.C. 103 rejections above. Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
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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/JACQUELINE M PINDERSKI/Examiner, Art Unit 3785
/RACHEL T SIPPEL/Primary Examiner, Art Unit 3785