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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/25 has been entered.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 21-25 and 34-40 are rejected under 35 U.S.C. 103 as being unpatentable over Hawes et al. (US 2016/0360789).
Claims 21 and 39. Hawes et al. discloses an e-vapor apparatus and dispensing body 104 (device body). The dispensing body 104 comprises a frame portion which includes a first frame 110 and a second frame 112. The side walls 116 of the first frame 110 and the second frame 112 define a through-hole 114. The through-hole 114 is configured to receive a pod assembly. The pod assembly may include a vapor precursor compartment (nicotine pre-vapor formulation), a device compartment, and a vapor channel. The vapor channel may extend from the device compartment and traverse the vapor precursor compartment ([0039]-[0040]; Figure 1). An attachment structure (e.g., mating member/recess) may be provided on at least one of the side walls 116 and the side surface of the pod assembly. For example, the attachment structure may include a mating member that is formed on the side wall 116 (of the first frame 110 and/or second frame 112) and a corresponding recess that is formed on the side surface of the pod assembly. The mating member may be a rounded structure (protrusion) to facilitate the engagement/disengagement of the attachment structure, while the recess may be a concave indentation that corresponds to the curvature of the rounded structure. The mating member may also be spring-loaded so as to retract (deflect) when the pod assembly is being inserted into the through-hole 114 and protract when mating member becomes aligned with the corresponding recess ([0050]-[0051]; Figure 5).
Hawes et al. teaches that the attachment structure (e.g., mating member/recess) may be provided on at least one of the side walls 116 and the side surface of the pod assembly but does not explicitly disclose that a mating member (protrusion) is located on an upstream sidewall and a downstream sidewall of the dispensing body 104 and that a corresponding recess is located on the upstream side and downstream side of the pod assembly. However, the shifting the location of the attachment structures (protrusion/recess) amounts to a mere rearrangement of parts which would not modify the operation of the device. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that the attachment structure (protrusion/recess) taught by Hawes et al. may be located on an upstream sidewall and a downstream sidewall of the dispensing body 104 and that a corresponding recess is located on the upstream side and downstream side of the pod assembly.
Claims 22 and 23. Hawes et al. discloses that the mating member may also be spring-loaded so as to retract (deflect) when the pod assembly is being inserted into the through-hole 114 and protract when mating member becomes aligned with the corresponding recess ([0050]-[0051]; Figure 5).
Claims 24 and 25. Hawes et al. discloses that the attachment structure may include a mating member that is formed on the side wall 116 (of the first frame 110 and/or second frame 112) and a corresponding recess that is formed on the side surface of the pod assembly. The mating member may be a rounded structure (protrusion) to facilitate the engagement/disengagement of the attachment structure, while the recess may be a concave indentation that corresponds to the curvature of the rounded structure. The mating member may also be spring-loaded so as to retract (deflect) when the pod assembly is being inserted into the through-hole 114 and protract when mating member becomes aligned with the corresponding recess ([0050]-[0051]; Figure 5).
Claim 34. Hawes et al. discloses that the recess may be a concave indentation that corresponds to the curvature of the rounded structure ([0051]).
Claim 35. Hawes et al. teaches that the attachment structure (e.g., mating member/recess) may be provided on at least one of the side walls 116 and the side surface of the pod assembly but does not explicitly disclose that there are at least two upstream recesses and at least two downstream recesses. However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced (See MPEP § 2144.04(VI)(C)). In this case, including two upstream recesses and two downstream recesses would not produce an unexpected result, thus it would have been obvious to one of ordinary skill in the art before the effective filing date that the attachment structure of Hawes et al. may include at least two upstream recesses and at least two downstream recesses.
Claim 36. Hawes et al. discloses that the mating member may be a rounded structure (spherical cap) to facilitate the engagement/disengagement of the attachment structure ([0051]).
Claim 37. Hawes et al. teaches that the attachment structure (e.g., mating member/recess) may be provided on at least one of the side walls 116 and the side surface of the pod assembly but does not explicitly disclose that there are at least two upstream protrusions and at least two downstream protrusions. However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced (See MPEP § 2144.04(VI)(C)). In this case, including two upstream protrusions and two downstream protrusions would not produce an unexpected result, thus it would have been obvious to one of ordinary skill in the art before the effective filing date that the attachment structure of Hawes et al. may include at least two upstream protrusions and at least two downstream protrusions.
Claim 38. Hawes et al. discloses that the engagement of the mating member with the corresponding recess may result in an audible click, which notifies the adult vaper that the pod assembly is secured and properly positioned within the through-hole 114 of the dispensing body 104 ([0051]).
Claim 40. Hawes et al. discloses a pod assembly of an e-vapor apparatus, the pod assembly 302 may include a vapor precursor compartment (nicotine pre-vapor formulation), a device compartment, and a vapor channel. The vapor channel may extend from the device compartment and traverse the vapor precursor compartment ([0039]-[0040]; Figure 1). The pod assembly includes a pod trim 310 that is arranged between a first cap 304 and a second cap 314. The first cap 304 may be regarded as a front cap, and the second cap 314 may be regarded as a rear cap (or vice versa). The pod trim 310 defines a channel outlet 312 for the release of vapor generated within the pod assembly 302 ([0063]; Figures 15-17 showing a pod assembly having a front face, rear face, first side face, second side face, upstream end, and downstream end). An attachment structure (e.g., mating member/recess) may be provided on at least one of the side walls 116 and the side surface of the pod assembly. For example, the attachment structure may include a mating member that is formed on the side wall 116 (of the first frame 110 and/or second frame 112) and a corresponding recess that is formed on the side surface of the pod assembly. The mating member may be a rounded structure (protrusion) to facilitate the engagement/disengagement of the attachment structure, while the recess may be a concave indentation that corresponds to the curvature of the rounded structure. The mating member may also be spring-loaded so as to retract (deflect) when the pod assembly is being inserted into the through-hole 114 and protract when mating member becomes aligned with the corresponding recess ([0050]-[0051]; Figure 5).
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11564416. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent No. 11564416 is directed toward a non-nicotine e-vaping device while the instant claims are directed toward a nicotine e-vaping device. Both nicotine containing and non-nicotine vapor formulations are notoriously well known in the art, so it would have been obvious to one of ordinary skill in the art that the claimed e-vaping device may be used with either a nicotine containing formulation or a non-nicotine vapor formulation. Aside from the contents of the pod assembly (nicotine containing vs. non-nicotine), the 11564416 patent contains all limitations of the current application as well as additional limitations (the at least one upstream protrusion and the at least one downstream protrusion configured to engage with the at least one upstream recess and the at least one downstream recess).
Claims 21-40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of copending Application No. 18/161255 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application is directed toward a non-nicotine e-vaping device while the instant claims are directed toward a nicotine e-vaping device. Both nicotine containing and non-nicotine vapor formulations are notoriously well known in the art, so it would have been obvious to one of ordinary skill in the art that the claimed e-vaping device may be used with either a nicotine containing formulation or a non-nicotine vapor formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/971689 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application is directed toward a non-nicotine e-vaping device while the instant claims are directed toward a nicotine e-vaping device. Both nicotine containing and non-nicotine vapor formulations are notoriously well known in the art, so it would have been obvious to one of ordinary skill in the art that the claimed e-vaping device may be used with either a nicotine containing formulation or a non-nicotine vapor formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/971946 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application contains all limitations of the current application as well as additional limitations (the at least one upstream protrusion and the at least one downstream protrusion configured to engage with the at least one upstream recess and the at least one downstream recess).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 26-33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Hawes et al. (US 2016/0360789). Hawes et al. discloses the device of claim 1 but does not explicitly disclose wherein the device body includes a bezel structure defining the through hole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747