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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 12/31/2025 (“Amendment”) has been entered, which includes an amendment to claim 72 and supporting remarks. Accordingly, the rejections under 35 USC 102-103 and the double patenting rejections over US 10,362,806 are withdrawn. However, new rejections under 35 USC 103 in view of Li are set forth below, and the double patenting rejections are maintained over US 9,888,719.
Response to Arguments
Applicant's arguments regarding the double patenting rejections (Amendment p. 6) have been fully considered but they are not persuasive. Applicant requests the rejections to be held in abeyance because the claims are subject to change so as to render the rejections moot (Amendment p. 6). The Examiner respectfully disagrees because the amended claims are still not patentably distinct from the copending application, and thus the double patenting rejection are maintained.
Applicant’s arguments regarding the 35 USC 103 rejections (Amendment p. 7-9) have been fully considered but they are not persuasive. Applicant argues that Li does not disclose separable elements reading on the limitations of amended claim 72, because in Li there is no wick portion configured to receive the liquid material from a reservoir and then be heated by a susceptor, Li simply heats the whole atomizing core 1, and thus Li’s core 1 does not read on both the wick and susceptor as claimed (Amendment p. 7-8). The Examiner respectfully disagrees because Li’s atomizing core 1 receives liquid from the liquid storage component 14 and is then heated by the helix heater 2, as set forth in the rejection below. Thus, the core 1 reads on the “wick” and the heater 2 reads on the “susceptor”. The Examiner’s previous interpretation of the core 1 reading on both the wick and susceptor (see Final Rejection mailed 10/01/2025 at p. 8) is no longer relied upon in the rejection below.
Applicant’s remaining arguments regarding the 35 USC 103 rejections (Amendment p. 7-9) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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 72-76 and 86-92 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2012/0234315 A1, previously cited).
Regarding claim 72, Li is directed to an induction atomizing device (Title), which reads on an “electronic vaping (e-vaping) device” as claimed.
The device includes a second housing 18 (“cartridge”) ([0019], Figs. 1-2).
In a second embodiment, the second housing 18 includes a liquid storage component 14 (“reservoir”) ([0022-23], Fig. 2).
The second housing 18 includes an atomizing core 1 (“wick”) which receives the liquid from the liquid storage component 14 ([0022-23], Fig. 2).
The second housing 18 includes a helix heater 2 (“susceptor”) surrounding the exterior (“external portion”) of the atomizing core 1 ([0019-20], Fig. 2). A high frequency coil 3 induces a current in the heater 2, causing the core 1 temperature to rise and vaporize the liquid ([0019-20], see also [0022-23] and Figs. 1-2 disclosing that the inductive heating is carried out in the same manner in both embodiments). However, the heater 2 is helical and not a “plate” as claimed. But changing the heater 2 from a helical shape to a plate would be a mere change in shape, which does not patentably distinguish the prior art. See MPEP 2144.04(IV)(B); see also in re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
The device includes a first housing 13 (“power source section”) which may be detached from and connected to the second housing 18 ([0019], Fig. 2).
The first housing 13 includes a high frequency generator 6 (“induction source”) including the high frequency coil 3 for inducing current in the heater 2 ([0019-20], Fig. 2).
The first housing 13 includes a circuit board (“control circuitry”) for the high frequency generator 6 [0019].
The first housing 13 includes a power supply 10 (“power supply”) ([0019], Fig. 2).
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Regarding claim 73, Li’s high frequency generator 6 includes the high frequency coil 3 (“inductive coil”) which induces current in the atomizing core 1 ([0023], Fig. 2).
Regarding claims 74-75, the coil 3 is helical, extends longitudinally (per claim 74), and is planar (per claim 75), as shown in Fig. 2 (compare with Applicant’s longitudinal helix coil 36 at [0135], Fig. 2, and Applicant’s planar coil 36 at [0160], Fig. 18A).
Regarding claim 76, Li discloses the coil 3 as set forth above in the discussion of claim 73. However, the coil 3 extends longitudinally and thus Li fails to disclose “wherein the inductive coil comprises a helix extending in a transverse direction to a longitudinal direction of the power source section”. But orienting the coil 3 in a transverse direction, instead of the disclosed longitudinal direction, would be a mere rearrangement of parts which does not patentably distinguish the prior art. See MPEP 2144.04(VI)(C); see also in re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 86, Li fails to explicitly disclose the heater 2 including the materials recited in claim 86. However, the atomizing core 1 can be made from stainless steel fibre [0024], which is a well-known conductive material. When the core 1 is made from non-conductive materials, the heater 2 is used as a susceptor instead [0019], and thus it would be obvious to one of ordinary skill in the art to use stainless steel fibre for the heater 2, which reads on claim 86.
Regarding claim 87, the device includes the first and second housings 13, 18 (which together form an “outer casing”), an air inlet vent 9 (“air inlet”), an outlet suction vent 16 (“vapor outlet”), and an air passage (“airflow passage”) therebetween ([0019], Fig. 2).
Regarding claims 88-89, a plugging port 15 connects the first and second housing 13, 18 [0014, 0017]. As shown in Fig. 2, the plugging port 15 includes two interlocking structures which overlap axially (which reads on “wherein a portion of the power source section is in the cartridge when the power source section and the cartridge are connected” per claim 88 and “wherein a portion of the cartridge is in the power source section when the power source section and the cartridge are connected” per claim 89). However, the heater 2 is not “axially spaced” from the proximate end of the coil 3 as claimed. But positioning the core 1 and heater 2 to be axially spaced from the coil 3 would be a mere rearrangement of parts, which does not patentably distinguish the prior art. See MPEP 2144.04(VI)(C); see also in re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 90, the device includes an air flow sensor 7 (“puff sensor”) which actuates the high frequency generator 6 [0023-24].
Regarding claim 91, Li discloses a circuit board (“control circuitry” as set forth above) and a push-pull output circuit in connection with the high frequency generator 6 [0019, 0024]. Li also discloses the sensor 7 and power supply 10 as set forth above, and discloses that all these components are electrically connected [0019]. However, Li fails to explicitly disclose such circuitry being “configured to control a variable power cycle to the induction source as a function of an output signal of the puff sensor” as claimed. But one of ordinary skill in the art would expect such circuitry to control the supply of power to the heat source, and thus Li’s disclosure of these components being electrically connected [0019] suggests such an arrangement, rendering the claim obvious. Furthermore, making the power cycle “variable” as claimed is merely a manner of operating the power supply 10 and/or circuitry of the generator 6, which does not structurally distinguish the claimed device from the prior art. See MPEP 2114(II); see also ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 92, the atomizing core 1 may be made of foamed metal [0024].
Claim 77 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2012/0234315 A1) as applied to claim 72, in view of Campbell (US 5,613,505 A, previously cited).
Regarding claim 77, Li discloses annular ferrite 4 surrounding the coil 3 and connecting it to the generator 6 ([0019], Fig. 2). The ferrite 4 extends in a “longitudinal direction” of the first section 13 as shown in Fig. 2. However, Li fails to disclose the ferrite 4 being a “cylindrical core” wherein the coil 3 is “wound about the core” as claimed.
Campbell is directed to an inductive heating system for smoking articles which generates aerosols (Title; Abstract). Campbell’s system includes a ferrite pole piece 11 and a ferrite center leg 20 with a current bearing wire 12 wrapped around the leg 20 (which reads on a “cylindrical core comprising a ferrite material, the inductive coil is wound about the core”) (col. 5 l. 38-65; Fig. 1). Current flowing through the wire 12 inductively heats a susceptor (id.). The symmetrical shape of the leg 20 and pole pieces 11 forms a magnetic field which is self-sealing (id.).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Li by replacing the annular ferrite 4 with Campbell’s ferrite pole pieces 11 and ferrite center leg 20, the pole pieces 11 being arranged symmetrically as in Campbell and the center leg 20 being surrounded by Li’s coil 3, in order to inductively heat Li’s heater 2, because both Li and Campbell are directed to inductively heated aerosol articles, Campbell discloses that this arrangement forms a magnetic field which is self-sealing, and this involves combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 72-77 and 86-91 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 13, 15, and 17-19 of U.S. Patent No. 9,888,719 (reference patent).
Regarding claim 72, reference claim 1 recites an electronic vaping (e-vaping) device comprising: a liquid reservoir component (“cartridge”) connectable to a power supply component, the liquid reservoir component including a liquid reservoir configured to contain a liquid material, the liquid reservoir being in an annular space between the outer casing and the inner tube, a susceptor located adjacent the central air passage, and a wick in communication with the liquid reservoir and configured to be in thermal communication with the susceptor such that the susceptor is operable to heat the liquid material to a temperature to vaporize the liquid material. The device further includes the power supply component including an outer casing extending in a longitudinal direction including a power source in electrical communication with an induction source, the induction source being axially spaced from the susceptor by a distance if the power supply component is attached to the liquid reservoir component such that the induction source is operable to generate an inductive field to heat the susceptor if powered by the power source such that the susceptor heats the liquid material to a temperature to vaporize the liquid material. Reference claim 13 recites wherein the susceptor is a conductive plate in contact with a portion of the wick. The reference claims fail to recite the susceptor being in contact with an “external” portion of the wick, but such contact would be achieved by a mere rearrangement of parts which does not patentably distinguish the reference claims. See MPEP 2144.04(VI)(C); see also in re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Reference claim 19 further recites that the power supply component further comprises control circuitry which controls the induction source.
Regarding claim 73, reference claim 2 recites wherein the induction source includes an inductive coil at an end thereof proximate to the susceptor of the liquid reservoir component, and the inductive coil is configured to generate the inductive field to heat the susceptor.
Regarding claim 74, reference claim 3 recites wherein the inductive coil comprises a helix extending in the longitudinal direction of the outer casing.
Regarding claim 75, reference claim 4 recites wherein the inductive coil comprises a planar coil.
Regarding claim 76, reference claim 5 recites wherein the inductive coil comprises a helix extending in a transverse direction to the longitudinal direction of the outer casing.
Regarding claim 77, reference claim 6 recites wherein the induction source further includes a cylindrical core comprising a ferrite material, the inductive coil is wound about the cylindrical core and the cylindrical core extends in one of the longitudinal direction of the outer casing and in a transverse direction to the longitudinal direction of the outer casing.
Regarding claim 86, reference claim 15 recites wherein the susceptor comprises at least one of stainless steel, copper, copper alloys, ceramic material coated with film resistive material, nickel chromium alloys, and combinations thereof.
Regarding claim 87, reference claim 1 recites that the liquid reservoir component includes an outer casing, an air inlet, a vapor outlet, and a central air passage communicating with the air inlet and the vapor outlet, the susceptor located adjacent the central air passage.
Regarding claims 88-89, reference claim 17 recites wherein the susceptor is axially spaced from a proximate end of the induction source by about 0.01 to 2 mm if the liquid reservoir component is connected to the power supply component. Reference claim 18, which depends from reference claim 17, further recites wherein a portion of the power supply component is in the liquid reservoir component if the power supply component and the liquid reservoir component are connected and the susceptor is axially spaced from the proximate end of the induction source, or a portion of the liquid reservoir component is in the power supply component if the power supply component and the liquid reservoir component are connected and the susceptor is axially spaced from a proximate end of the induction source.
Regarding claims 90-91, reference claim 19 recites wherein the power supply component further comprises a puff sensor, and the puff sensor is configured to sense air flow and initiate generation of the inductive field from the induction source, which reads on claim 90, reads on “wherein the control circuitry is configured to control…the induction source as a function of an output signal of the puff sensor” per claim 91, and further renders obvious providing a “variable power cycle” to the induction source per claim 91. See MPEP 2114(II); see also ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 92 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, and 19 of U.S. Patent No. 9,888,719 (reference patent) in view of Li (US 2012/0234315 A1).
Reference claims 1, 13, and 19 disclose the wick as set forth above in the discussion of claim 72, but are silent on the wick material and thus fail to disclose "wherein the wick includes at least one of glass, fiberglass, ceramic, metal, graphite, or polymer material" as recited in claim 92.
Li is directed to an induction atomizing device (Title). The device includes an atomizing core 1 which receives liquid to be inductively heated and may be made of foamed metal [0019, 0024]. One of ordinary skill in the art would recognize that Li's wick could similarly be constructed of foamed metal to absorb liquid.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify reference claim 19 by constructing the wick with foamed metal, because both the reference claims and Li are directed to induction vaporization devices, and this involves combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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