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 Amendment
Applicant’s amendment to claims 12-13, 16, and 19-20, cancellation of claim 18, addition of new claim 23, amendment to the specification, and remarks therewith filed 10/15/2025 (“Amendment”) have been entered. Accordingly, the objections to the specification and claims, the claim rejections under 35 USC 112, and the claim rejections under 35 USC 102 are withdrawn. However, the claim rejections under 35 USC 103 and for double patenting are maintained. Additionally, a new objection to claim 19 and new rejections of claim 23 under 35 USC 103 and for double patenting are necessitated by the amendment. Claims 12-17 and 19-23 remain pending and are examined herein.
Response to Arguments
Applicant's arguments regarding the rejection of claim 12 over Hwang (Amendment p. 9-10) have been fully considered but they are not persuasive. Applicant argues that modifying Hwang’s PCB 300EP to be perpendicular to the axial direction would not be an obvious change in shape as alleged in the Office Action, because changing the orientation of a PCB in a tight environment is not a change in shape and Applicant’s specification discusses the need for efficient use of space (Amendment p. 9-10).
The Examiner respectfully disagrees. The sole difference between Hwang and claim 12 is the orientation of the major axes of the control unit (i.e., Hwang’s PCB 300EP has a major diameter in line with the longitudinal axis of the device, whereas Applicant’s claimed control unit has a major diameter perpendicular to such axis; compare Hwang’s Fig. 4A showing PCB 300EP with Applicant’s Fig. 2 showing diameter 23 of control unit 21). The claimed configuration could be achieved by simply shortening or widening the PCB 300EP such that it is wider than it is long. Such a change in shape does not amount to a patentable distinction over the prior art.
Applicant cites to the substitute specification which allegedly discusses the need for efficient use of space (Amendment p. 9), but Applicant’s specification is generally not considered in the context of motivation to modify the prior art (such consideration would be impermissible hindsight). Regardless, Hwang describes the connection points of the PCB 300EP, but does not otherwise place any particular importance on the physical dimensions of the PCB 300EP (see generally Hwang at p. 13-16 l. 580-728, describing the printed circuit board 300EP). One of ordinary skill in the art could change the length or width of the PCB 300EP while maintaining its various functionalities.
Claim Objections
Claim 19 is objected to because of a typo (correction shown herein), the claim reciting “The electronic cigarette according to claim [18]12”.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12-16, 19-21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO 2015/190810 A1, provided by Applicant in IDS dated 12/19/2022, English translation relied upon).
Regarding claim 12, Hwang discloses an electronic cigarette 1000 with modular components including a liquid container 100 (“cartridge unit”) detachably coupled to a power control module 300M and a battery module 400M (the two modules together forming “a regulating unit”) (p. 5 l. 169-180 and 197-207, Fig. 1, reproduced below). The liquid container 100 is shown above control module 300M in Fig. 1, but Hwang implicitly discloses the inverse orientation because electronic cigarettes are well-known to be portable, hand-held devices which can be oriented as desired by a user (which reads on “An electronic cigarette comprising, along a central Z axis from bottom to top, a cartridge unit and a regulating unit”).
The battery module 400M includes a battery BT with wires 400L1, 400L2 extending from positive and negative poles (which reads on “a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator”) (p. 9 l. 379-388, Fig. 2). The control module 300M includes a printed circuit board 300EP (“a control unit”) and electrodes 300E1, 300E2 connected to the battery BT (p. 7 l. 271-288, p. 13 l. 591-600, Fig. 4a, reproduced below). A spacer 300G is made from a material which is electrically insulating which insulates the PCB 300EP from the control housing 300 and e-cigarette 1000 (p. 13 l. 575-580). Additionally, an insulator 300I insulates the electrodes 300E1, 300E2 from the housing 300 and e-cigarette 1000 (p. 13 l. 591-p. 14 l. 2).
Hwang fails to explicitly disclose the PCB 300EP having “a diameter perpendicular to the central Z axis” as claimed. However, modifying the PCB 300EP to be perpendicular to the axial direction is considered a mere change in shape, which is within the purview of the skilled artisan. MPEP 2144.04(IV)(B); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by orienting or modifying the shape of the PCB 300EP to be perpendicular to an axial direction of the e-cigarette 1000, because this is a mere change in shape.
Regarding claim 13, Hwang discloses that the PCB 300EP is inserted into a spacer 300G, which fits within the housing 300 with some clearance so that the PCB 300EP is easily inserted without compressive stress (p. 13 l. 583-591).
Regarding claim 14, Hwang discloses an electrode 300E1 (“positive contact surface”) which faces and contacts an electrode 100E of the liquid container 100 (p. 7 l. 271-288). The electrode 300E is electrically connected to the battery BT (“an inner tube”), which is tubular as shown in Fig. 2.
Regarding claim 15, Hwang discloses that PCB 300EP is inserted into a spacer 300G (“a closure component”), which is part of the removable control module 300M (p. 13 l. 583-591 and Fig. 4a). A cap member 300TP (“ring”) abuts one end of the control module 300M and includes a through hole 300TPH for accommodating an electrode 300E2, which is electrically connected to the electrode 300E1 and battery BT (p. 14 l. 633-649) (which reads on “wherein the at least one positive contact surface of the control unit is operatively connected to the inner tube of the regulating unit via the press ring and the closure component). The cap member 300TP has a ringed shape as shown in Fig. 4a, but Hwang fails to disclose that the cap member 300TP is a “releasable press” ring as claimed. However, Hwang discloses a one-touch cap (which reads on a “releasable press ring”) as a means of detachably connecting components in the battery housing 400 (p. 17 l. 797-p. 18 l. 2). One of ordinary skill in the art would recognize that the cap member 300TP could similarly be formed as a one-touch cap to increase the modularity of components within the control module 300M.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by replacing the cap member 300 with a one-touch cap member 300, because this would allow detachable connection (and thus increased modularity) as taught by Hwang, and this would be a simple substitution of one known element for another to obtain predictable results.
Regarding claim 16, Hwang discloses slots 300GS (“a fitting seat”) on the spacer 300G which receive the PCB 300EP by slidable insertion (which reads on “a transition fit, wherein the control unit can be inserted into the electronic cigarette with low pressure or can be extracted from the electronic cigarette with low pressure”) (p. 13 l. 580-591).
Regarding claim 19, Hwang discloses that the PCB 300EP may include power control circuits and other electronic components mounted thereon, such as a switch button terminal 300SP (p. 13 l. 583-591, p. 14 l. 617-628). The PCB 300 EP and electronic components are connected to other modules via wiring bodies 300 CPE1, 300 CPE2 and electrodes 300E1, 300E2 (which reads on “electrically connected to at least one of the positive contact, the negative contact, a positive contact surface or an outer surface contact of the control unit”) (p. 14 l. 649-657, Fig. 4a, showing an electrical connection between electrodes 300E1, 300E2, wiring bodies 300CPE1, 300CPE2, PCB 300EP, and terminal 300SP).
Regarding claim 20, Hwang discloses the switch button terminal 300SP provided on the PCB 300EP as set forth above. However, Hwang discloses that electronic components are “mounted” on the PCB 300EP, and therefore fails to disclose the terminal 300SP and PCB 300EP being “formed as an embedded, integrated electronic component”. However, modifying the terminal 300SP (or other electrical components) to be “an embedded, integrated electronic component” as claimed is merely making two components integral, which is within the purview of the skilled artisan. MPEP 2144.04(V)(B); In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by integrating the terminal 300SP into the PCB 300EP, because this is merely making two components integral.
Regarding claim 21, Hwang discloses the electrode 300E1 and wiring body 300CPE1 extending toward and contacting the electrode 100E of the liquid container 100 (p. 7 l. 271-288, p. 13 l. 591-600, Figs. 2 and 4a). The wiring body 300CPE1 may be a pogo pin (p. 13 l. 592).
Regarding claim 23, Hwang discloses an electronic cigarette 1000 with modular components including a liquid container 100 (“cartridge unit”) detachably coupled to a power control module 300M and a battery module 400M (the two modules together forming “a regulating unit”) (p. 5 l. 169-180 and 197-207, Fig. 1). The liquid container 100 is shown above control module 300M in Fig. 1, but Hwang implicitly discloses the inverse orientation because electronic cigarettes are well-known to be portable, hand-held devices which can be oriented as desired by a user (which reads on “An electronic cigarette comprising, along a central Z axis from bottom to top, a cartridge unit and a regulating unit”).
The battery module 400M includes a battery BT with wires 400L1, 400L2 extending from positive and negative poles (which reads on “a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator”) (p. 9 l. 379-388, Fig. 2). The control module 300M includes a printed circuit board 300EP (“a control unit”) and electrodes 300E1, 300E2 connected to the battery BT (p. 7 l. 271-288, p. 13 l. 591-600, Fig. 4a). Hwang discloses that the PCB 300EP is inserted into a spacer 300G, which fits within the housing 300 with some clearance so that the PCB 300EP is easily inserted without compressive stress (which reads on a “clearance fit”) (p. 13 l. 583-591).
Hwang fails to explicitly disclose the PCB 300EP having “a diameter perpendicular to the central Z axis” as claimed. However, modifying the PCB 300EP to be perpendicular to the axial direction is considered a mere change in shape, which is within the purview of the skilled artisan. MPEP 2144.04(IV)(B); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by orienting or modifying the shape of the PCB 300EP to be perpendicular to an axial direction of the e-cigarette 1000, because this is a mere change in shape.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO 2015/190810 A1) as applied to claim 16 in view of Cho (KR 20160095694 A, English translation relied upon).
Hwang discloses the PCB 300EP includes wiring bodies 300CPE1, 300CPE2 (“circumferential surface contact”) on its exterior (p. 13 l. 591-p. 14 l. 1). The wiring bodies 300CPE1, 300CPE2 are connected to the electrodes 300E1, 300E2 (p. 13 l. 591-p. 14 l. 1), which are connected to the battery BT as set forth above. As shown in Fig. 4a, however, the wiring bodies 300CPE1, 300CPE2 are not received in the slots 300GS, and thus Hwang fails to disclose “the circumferential surface contact forming a snug fit with a closure component” as claimed.
Cho is directed to a vaporizing inhalation device with a removable control card [0001]. The control card 20 includes connection terminals 214 (“circumferential surface contact”) on the exterior of a circuit board 21 ([0035], Fig. 4). The circuit board 21 is contained within a case 215 (“a closure component”) to protect from external impact ([0037, Figs. 5a-b). As shown in Fig. 5b, reproduced below, the connection terminals 214 align with terminals 216 when the circuit board 21 is inserted and thus form part of the fit between the board 21 and case 15 (which reads on “the circumferential surface contact forming a snug fit with a closure component”) [0037].
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Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by encasing the PCB 300EP in the case 15 as taught by Cho, because both Hwang and Cho are directed to vaporization devices with removable control components, Cho teaches that the case 15 provides additional protection to the circuit board 21, and this involves use of a known technique to improve a similar device in the same way.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO 2015/190810 A1) as applied to claim 12 in view of Nettenstrom (US 2019/0099561 A1).
Hwang discloses the wiring bodies 300CPE1, 300CPE2 which may be pogo pins (“at least one positive contact pin, at least one negative contact pin”) as set forth above (p. 7 l. 271-288, p. 13 l. 591-600, Figs. 2 and 4a). Hwang fails to disclose “one communication contact pin” as claimed.
Nettenstrom is directed to a vapor provision system including a cartomizer and control unit (Abstract). Nettenstrom discloses two sprung pins 35 which connect the control unit 300 and battery 31 to the cartomizer 200, as set forth above [0066]. Nettenstrom discloses additional sprung pins (“one communication contact pin”), which allow measurements from the cartomizer 200 to be communicated to the control unit 300 [0066].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by including a sprung pin in the control module 300M connectable to the liquid container 100 as taught by Nettenstrom, because both Hwang and Nettenstrom are directed to vaporizer devices with modular control units, Nettenstrom teaches that the additional sprung pin allows the control unit 300 to receive measurements from the cartomizer 200, and this involves use of a known technique to improve a similar device in the same way.
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 12-13, 16, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-10 of copending Application No. 18/027,591 in view of Hwang (WO 2015/190810 A1).
Regarding claim 12, copending claim 1 recites an electric cigarette comprising a cartridge unit and a control unit (“regulating unit”) detachably arranged thereon, the electric cigarette having a cross-section extending along a Z-axis. Copending claim 1 recites a first, second, and/or third control element body with diameter perpendicular to the Z-axis. Copending claim 1 recites a printed circuit board insulated by means of an insulation filling and aligned transversely to the Z-axis.
Copending claim 1 fails to recite “a battery unit for electronic power supply, the battery unit comprising a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator” as claimed.
Hwang is directed to an electronic cigarette with modular components (p. 1 l. 11). Hwang discloses a control module 300M connected to a battery module 400M which includes a battery BT with wires 400L1, 400L2 extending from positive and negative poles (which reads on “a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator”) (p. 9 l. 379-388, Fig. 2). Batteries are well-known devices for supplying power to the atomizer of electronic cigarettes (p. 1 l. 15-25).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify copending claim 1 to include the battery module 400 with battery BT and wires 400L1, 400L2 connected to the first, second, and/or third control element body, because both copending claim 1 and Hwang are directed to electronic cigarettes with detachable components, Hwang teaches including a battery to supply power to the atomizer, and this involves use of a known technique to improve a similar device in the same way.
Regarding claim 13, copending claim 9 recites that the control element body has a clearance fit within the electric cigarette and is slightly displaceable.
Regarding claim 16, copending claim 10 recites a transition fit formed between the control element body and the electric cigarette.
Regarding claim 23, copending claims 1 and 9 in combination with Hwang read on claim 23 in a similar manner as set forth above regarding instant claims 12-13.
This is a provisional nonstatutory double patenting rejection.
Claims 12-13, 16, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 20-21 of copending Application No. 18/570,591 in view of Hwang (WO 2015/190810 A1).
Regarding claim 12, copending claim 11 recites an electric cigarette comprising a cartridge unit and a control unit (“regulating unit”) detachably arranged thereon, the electric cigarette having a cross-section extending along a Z-axis. Copending claim 11 recites one or more control element bodies with diameter perpendicular to the Z-axis. Copending claim 11 recites a printed circuit board insulated by means of an insulation filling and aligned transversely to the Z-axis.
Copending claim 11 fails to recite “a battery unit for electronic power supply, the battery unit comprising a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator” as claimed.
Hwang is directed to an electronic cigarette with modular components (p. 1 l. 11). Hwang discloses a control module 300M connected to a battery module 400M which includes a battery BT with wires 400L1, 400L2 extending from positive and negative poles (which reads on “a battery cell having a negative terminal and a positive terminal spaced therefrom by an insulator”) (p. 9 l. 379-388, Fig. 2). Batteries are well-known devices for supplying power to the atomizer of electronic cigarettes (p. 1 l. 15-25).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify copending claim 11 to include the battery module 400 with battery BT and wires 400L1, 400L2 connected to the first, second, and/or third control element body, because both copending claim 11 and Hwang are directed to electronic cigarettes with detachable components, Hwang teaches including a battery to supply power to the atomizer, and this involves use of a known technique to improve a similar device in the same way.
Regarding claim 13, copending claim 20 recites that the control element body has a clearance fit within the electric cigarette and is slightly displaceable.
Regarding claim 16, copending claim 21 recites a transition fit formed between the control element body and the electric cigarette.
Regarding claim 23, copending claims 11 and 20 in combination with Hwang read on claim 23 in a similar manner as set forth above regarding instant claims 12-13.
This is a provisional nonstatutory double patenting 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/KATHERINE A WILL/Primary Examiner, Art Unit 1747
Prosecution Insights