DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 13-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of Bowen et al (US. Pat. No. 11,612,702).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Bowen et al generally encompass the outstanding claims of the instant application.
Regarding instant independent claim 13, and dependent claim 16, claim 13 of Bowen et al includes all of the limitations of the instant claim. While it recites that a lid is “sealed upon” the flange, it would be well understood by one having ordinary skill in the art that if something is “sealed upon” something else, it is also “coupled to” that something.
Regarding instant claim 14, claim 14 of Bowen et al includes all of the limitations of this instant claim.
Regarding instant claim 15, claim 15 of Bowen et al includes all of the limitations of this instant claim.
Regarding instant claim 17, claim 6 of Bowen et al includes all of the limitations of this instant claim. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have incorporated the heat-sealable film or aluminum feature of the lid into the invention of independent claim 12 of Bowen.
Regarding instant claim 18, claim 2 of Bowen et al includes all of the limitations of this instant claim. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have incorporated a vaporizable material that is fluidic or viscous into the shell of the invention of independent claim 12 of Bowen.
Regarding instant independent claim 19, and dependent claim 22, independent claim 1 of Bowen et al includes all of the limitations of the instant claim. Again, while it recites that a lid is “sealed upon” the flange, it would be well understood by one having ordinary skill in the art that if something is “sealed upon” something else, it is also “coupled to” that something.
Regarding instant claim 20, claim 8 of Bowen et al includes all of the limitations of this instant claim.
Regarding claim 21, claim 9 of Bowen et al includes all of the limitations of the instant claim.
Regarding claim 23, claim 6 of Bowen et al includes all of the limitations of the instant claim.
Regarding claim 24, claim 2 of Bowen et al includes all of the limitations of the instant claim.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 13-24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over WO2008/029381 (hereinafter referred to as “Oglesby et al”) in view of Thal (US. Pat. No. 4,944,317) and Robinson et al (US. Pat. App. Pub. 2008/0092912).
Regarding independent claim 13, and dependent claim 16, Oglesby et al discloses a disposable sachet (1) (read: cartridge/shell) of tobacco (2) shaped and sized to releasably and snugly be received in a vaporizing chamber (15) of a gas powered vaporizing device (5) (read: vaporizer device) for vaporizing vaporizable constituents of the tobacco (2) (see abstract and Fig. 10) (corresponding to the claimed “[a] cartridge for use in a vaporizer device comprising a chamber configured for the cartridge to be inserted therein”).
The sachet (1) has a downstream end cap (53) (read: lid) made of permeable (read: plurality of aperture or vents) paper material, sealingly secured to the side wall (45) of the sachet (1) which allows aerosol formed by the vaporized constituents to flow therethrough upon actuation of the heat transfer member (25) extending into the interior region (46) of the sachet (1) (corresponding to the claimed “a lid…wherein the lid comprises a plurality of apertures or vents; wherein the plurality of apertures of vents of the lid are configured to allow exit of an aerosol generated from heating the vaporizable material within the cartridge to a target temperature by a heater of the vaporizer device”.
Oglesby et al fails to specifically disclose that its sachet (1) (read: shell) has a “flange” and the downstream end cap (53) (read: lid) is “coupled to the flange”; however, Thal serves as a teaching that lidded tobacco-containing containers that are designed to be placed into a smoking device during use are known to have flanges which encircle the top of the container and to which a coversheet (read: lid) is heat-sealed or glued to in order to contain its contents (see col. 3, lines 8-31). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have added a flange to the downstream end of the sachet (1) of Oglesby et al in order to ensure a proper and efficient sealing of the end cap (53) to the side wall of the sachet (1) (corresponding to the claimed “a lid coupled to the flange”; and the ”wherein the lid is sealed to the flange” recitation of claim 16).
Oglesby et al discloses tobacco (2) and its constituents as vaporizable material used in its sachet but fails to specifically disclose “glycerin and a tobacco material”; however, the Robinson et al reference teaches an aerosol-generating substance that is designed to be contained in a container of an electrically powered aerosol generating device (read: vaporizer). The substance may include a mixture of glycerin and propylene glycol, in intimate contact with granulated tobacco (read: pieces of tobacco), and may be contained in the container in liquid form. Robinson et al further indicates that such tobacco materials produce visible aerosols that are “smoke-like” in nature (see paras. [0010], [0043], [0050], [0062], [0084]-[0086]). As such, it would have been obvious to one having ordinary skill in the art to have incorporated this aerosol-generating material of Robinson et al into the modified sachet (1) of Oglesby et al as such is already known in the art from the Robinson et al disclosure and is useful for controlling chemical composition of the mainstream aerosol produced by the device and, hence, positively impact the organoleptic experience for the user during operation as taught/suggested in Robinson et al (see para. [0070]) (corresponding to the claimed “a vaporizable material comprising glycerin and a tobacco material comprising pieces of tobacco…wherein the glycerin is present in an amount to produce a visible aerosol”).
Regarding claim 14, while Robinson et al fails to articulate that its “granulated tobacco” pieces are less than 2 mm in diameter, the word “granulated” teaches, if not strongly suggests, that the tobacco particles would be in granular form (read: in the form of grains, particles) which would have obviously motivated one of ordinary skill to provide such tobacco pieces in sizes that would be less than 2mm in diameter (corresponding to the claimed “wherein the pieces of tobacco are less than 2 mm in diameter”).
Regarding claim 15, Oglesby et a discloses that its tobacco is heated to a temperature generally in the range of from 130-2300C (page 1, lines 28-29). Note: in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05 (corresponding to the claimed “wherein the target temperature is 100oC to 200oC”).
Regarding claim 17, Oglesby et al discloses that its downstream end cap (53) (read: lid) may alternately be made of perforated aluminum foil (page 23, lines 1-3)(corresponding to the claimed “wherein the lid comprises…aluminum”).
Regarding claim 18, Robinson et al discloses that its aerosol-forming material can be in liquid form (see para. [0062]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided for the modified vaporizing material of the modified Oglesby et al sachet to also be in liquid form (corresponding to the claimed “wherein the vaporizable material is a fluidic …vaporizable material’).
Regarding independent claim 19, and dependent claim 22, Oglesby et al discloses a disposable sachet (1) (read: cartridge) of tobacco (2) shaped and sized to releasably and snugly be received in a vaporizing chamber (15) (read: body) of a gas powered vaporizing device (5) (read: vaporizer device) for vaporizing vaporizable constituents of the tobacco (2) (see abstract and Fig. 10) (corresponding to the claimed “[a]n aerosol-generating device comprising: a body; a cartridge configured to be inserted into the body”).
The sachet (1) has a downstream end cap (53) (read: lid) made of permeable (read: plurality of aperture or vents) paper material, sealingly secured to the side wall (45) of the sachet (1) which allows aerosol formed by the vaporized constituents to flow therethrough upon actuation of the heat transfer member (25) extending into the interior region (46) of the sachet (1) (corresponding to the claimed “the cartridge comprising: a shell containing a vaporizable material…wherein a heater is configured to heat the vaporizable material within the cartridge within the chamber to a target temperature; a lid coupled to the shell, the lid comprising a plurality of apertures or vents configured to allow exit from the cartridge of an aerosol generated by heating the vaporizable material within the cartridge”).
Oglesby et al fails to specifically disclose that its sachet (1) (read: shell) has a “flange” and the downstream end cap (53) (read: lid) is “coupled to the flange”; however, Thal serves as a teaching that lidded tobacco-containing containers that are designed to be placed into a smoking device during use are known to have flanges which encircle the top of the container and to which a coversheet (read: lid) is heat-sealed or glued to in order to contain its contents (see col. 3, lines 8-31). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have added a flange to the downstream end of the sachet (1) of Oglesby et al in order to ensure a proper and efficient sealing of the end cap (53) to the side wall of the sachet (1) (corresponding to the claimed “a lid coupled to the flange”; and “wherein the lid is sealed to the flange” recitation of claim 22).
Oglesby et al discloses tobacco (2) and its constituents as vaporizable material used in its sachet but fails to specifically disclose “glycerin and a tobacco material”; however, the Robinson et al reference teaches an aerosol-generating substance that is designed to be contained in a container of an electrically powered aerosol generating device (read: vaporizer). The substance may include a mixture of glycerin and propylene glycol, in intimate contact with granulated tobacco (read: pieces of tobacco), and may be contained in the container in liquid form. Robinson et al further indicates that such tobacco materials produce visible aerosols that are “smoke-like” in nature (see paras. [0010], [0043], [0050], [0062], [0084]-[0086]). As such, it would have been obvious to one having ordinary skill in the art to have incorporated this aerosol-generating material of Robinson et al into the sachet (1) of Oglesby et al as such is already known in the art from the Robinson et al disclosure and is useful for controlling chemical composition of the mainstream aerosol produced by the device and, hence, positively impact the organoleptic experience for the user during operation as taught/suggested in Robinson et al (see para. [0070]) (corresponding to the claimed “a vaporizable material comprising glycerin and a tobacco material comprising pieces of tobacco…wherein the glycerin is present in an amount to produce a visible aerosol”).
Regarding claim 20, while Robinson et al fails to articulate that its “granulated tobacco” pieces are less than 2 mm in diameter, the word “granulated” teaches, if not strongly suggests, that the tobacco particles would be in granular form (read: in the form of grains, particles) which would have obviously motivated one of ordinary skill to provide such tobacco pieces in sizes that would be less than 2mm in diameter (corresponding to the claimed “wherein the pieces of tobacco are less than 2 mm in diameter”).
Regarding claim 21, Oglesby et a discloses that its tobacco is heated to a temperature generally in the range of from 130-2300C (page 1, lines 28-29). Note: in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05 (corresponding to the claimed “wherein the target temperature is 100oC to 200oC”).
Regarding claim 23, Oglesby et al discloses that its downstream end cap (53) (read: lid) may alternately be made of perforated aluminum foil (page 23, lines 1-3)(corresponding to the claimed “wherein the lid comprises…aluminum”).
Regarding claim 24, Robinson et al discloses that its aerosol-forming material can be in liquid form (see para. [0062]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided for the modified vaporizing material of the modified Oglesby et al sachet to also be in liquid form (corresponding to the claimed “wherein the vaporizable material is a fluidic …vaporizable material”).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds for rejection, presented above, which were necessitated because of the amendments made to the claims, filed on August 26, 2025.
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 DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 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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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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