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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thorens et al. (US 20090272379 A1).
Regarding claim 16-18, Thorens et al. disclose a:
Cartridge having a first end and a second end opposite the first end (Figure 2, element 201, see below), with:
A fluid storage compartment that holds liquid material to be vaporized (205),
A heater (209) comprising a heating chamber (area around heater as illustrated), configured to heat the vaporizable material via wick 207, with the heating element disposed at least partially within the heater chamber
At least one vaporization chamber downstream from the heating chamber (213, i.e. aerosol forming chamber),
Aerosol outlet (i.e. air outlet) downstream of the condensation chamber and at the second end of the cartridge (211),
Electrical connections (ends of the heating coil 209 [0043])
Device body (figure 1, element 101 (i.e. shell, see below)) with the following structures:
PNG
media_image1.png
574
245
media_image1.png
Greyscale
cartridge receptable to receive the first end of the cartridge (see figure 3, illustrating cartridge received by a receptacle of the device)
power source (battery 103)
Electrical contacts 113 (“Ends of the heating coil 209 are in contact with the electrical contacts 113 on the shell” [0043]).
PNG
media_image2.png
563
241
media_image2.png
Greyscale
PNG
media_image3.png
653
258
media_image3.png
Greyscale
Thorens et al. do not expressly state that there are a “pair” of electrical contacts. However, Thorens et al. illustrates two ends of the heating coil 209 and expressly discloses that the, “Ends of the heating coil 209 are in contact with the electrical contacts 113 on the shell.” [0043]. Although two electrical contacts are not shown, it would have been inherent, as well as notoriously well known, that two contacts would be required to connect with the two ends of the heating coil to form a functional heating circuit. Such as circuit is required by Thorens et al. for the device to function as described. In addition, Thorens et al. uses the plural term “contacts” indicating that more than one contact is required.
Regarding claim 19, Thorens et al. does not teach how contacts at the ends heating coil 209 are formed, however, they are considered to be integral to the heating coil because they are illustrated as being integral. The steps and parameters for the process for making the contacts do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
PNG
media_image4.png
93
122
media_image4.png
Greyscale
Alternatively, the coil and contacts disclosed and illustrated by Thorens et al. have inherently been “machined” because heating wire must have inherently been formed by hand or machine with tools to take the shape illustrated by Thorens et al. (see portion of Figure 3 extracted below).
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.
Claim(s) 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorens et al. (US 20090272379 A1) as applied to claims 16-19 above.
Regarding claim 20, Thorens et al. does not expressly disclose that the heating coil is suspended by the pair of machined or stamped metal contacts claimed in claim 19. As illustrated, no other support for the heating element is shown or disclosed in Thorens et al. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention that the heating coil would be self-supporting based on the drawings of Thorens et al. and would be at least partially held in place (i.e. suspended), by the end/contacts of the heating coil (209). No other structural support is disclosed or illustrated and therefore one of ordinary skill in the art at the time of invention/filing would understand that the coil would be self-supporting (i.e. suspended).
PNG
media_image5.png
194
178
media_image5.png
Greyscale
Regarding claims 21 and 22, Thorens et al. disclose a second condensation chamber (the area shown in Figure 2 (see below) between the dotted line downstream of 213 (the first condensation chamber) and before the air outlet (211)). The mouthpiece of Thorens et al. is disclose as being the structure shown below.
Regarding claim 23, the mouthpiece is illustrated as being attached to the fluid storage compartment. In addition, Thorens et al. referres to the entire cartridge as “a replaceable mouthpiece” and that having them be integral improves cross-contamination, exposure to oxygen, and reduces risk of leaks [0008].
Claim(s) 24-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorens et al. (US 20090272379 A1) as applied to claims 16-19 above and in further view of Kolodziej (US 3,918,464).
Regarding claim 24, Thorens et al. discloses a that the cartridge (i.e. mouthpiece) and the device (i.e. shell) releasable lock together when engaged [0020] and disclose a lock mechanism 117 on the end of the receptacle in the shell that receives the cartridge (see figure 1 above) and then further disclose that, “The shell 101 and mouthpiece 201 are releasably locked together by lock mechanism 117.” [0043]. However, Thorens et al. do not explicitly disclose that the lock mechanism is a “snap-fit” connection or a magnetic coupling. However, both are well known methods of connecting smoking parts. For instance, Kolodziej disclose a smoking device with two portions that are connected with a snap-fit connection between a bead and groove in their respective parts (col. 2, 25-41). It would have been obvious to one of ordinary skill in the art at the time of invention to use the snap fit arrangement disclosed by Kolodziej as the locking mechanism of Thorens et al. because the arrangement facilitates assembly and disassembly of the device, which is the same function required of the locking mechanism of Thorens et al. (i.e. releasably lock together). The results of the combination would have been predictable and well within the ability of one of ordinary skill.
Regarding claims 25-28, an air inlet passages is formed when the cartridge is received into the receptacle that is defined by the outer wall of the cartridge (i.e. mouthpiece), the inner wall of the receptacle (shell), and extends from the proximal edge of the cartridge receptacle towards the first end of the cartridge (see figure 3 above).
Claim(s) 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorens et al. (US 20090272379 A1) and Kolodziej (US 3,918,464) as applied to claim 28 above and in further view of Zhongshan et al. (WO 2010118644 A1).
Regarding claim 29, Thorens et al. disclose that, “The mouthpiece and shell are sized and shaped so as to engage with one another,” [0049], but do not expressly disclose the shape other than illustrating that the components are cylindrical. However, it is well known in the art to form smoking articles with other shapes. In particular, Zhongshan et al. disclose an aerosol generating system and indicate that:
Depending on individual needs, electronic cigarettes can be made in any shape and with no length limit, including: isotropic cross-sections such as triangles, quadrilaterals, pentagons, hexagons, circles, ellipses, flattened shapes, or other irregular shapes; non-isotropic cross-sections such as triangles, quadrilaterals, pentagons, hexagons, circles, ellipses, flattened shapes, or other irregular shapes (e.g., tapered, progressive, parabolic, hyperbolic, convex, concave, etc.); and variable cross-sections (i.e., different cross-sectional shapes at different locations), such as triangles, quadrilaterals, pentagons, hexagons, circles, ellipses, flattened shapes, or other irregular shapes. [0082]
It would have been obvious to one of ordinary skill in the art at the time of invention to form the cylindrical elements of Thorens et al. in the shapes disclosed by Zhongshan et al. to allow for individuals to needs for other shapes as disclosed. In particular, it is notoriously well known that cylinders roll and can be roll and drop off of uneven surfaces. Other shapes do not have this problem (i.e. triangular, square, rectangular, cylindrical with a flat portion, octagonal, etc.). It would have been obvious to one of ordinary skill in the art at the time of invention to form the device of Thorens et al. in any of the shapes disclosed by Zhogshan et al. to prevent rolling off of surfaces.
Alternatively, it has been held that changes in shape are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see MPEP 2144.04(IV)(B)). In the instant application, the applicant does not provide any disclosure that indicates that the shape provides any significant structure or function connected to the specific shape. In particular, the applicant discloses that the “cylindrical look” may have marketing advantages due to familiarity and feel, but other shapes may allow greater volume. Other than cross-sectional area differences in different shapes, which is notoriously well known in the art, no other structural or functional differences are disclosed.
Regarding claim 30, a portion of the fluid storage compartment of Thorens et al. is within the cartridge receptacle.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorens et al. (US 20090272379 A1), Kolodziej (US 3,918,464), and Zhongshan et al. (WO 2010118644 A1) as applied to claim 30 above and in further view of Newton (US 2013/0228191).
Regarding claim 31, Thorens et al. discloses that in an alternative embodiment, the cartridge (i.e. mouthpiece) may be structured such that, when the shell and mouthpiece are engaged, the liquid reservoir is located downstream of the second end of the wick and the heating coil and that in this arrangement, air will be drawn through air inlets and the vapor and aerosol will pass around the cartridge on the way to the air outlet [0047]. However, the resulting structure disclosed by Thorens et al. would no longer have electrical contacts (209 and 113) at the proper location as illustrated.
Newton discloses a similar aerosol generating device that has the alternative arrangement disclosed by Thorens et al. (i.e. the reservoir is downstream from the heating element). Newton discloses that the electrical connection (22) is located on the end wall of the cartridge (see figure 1, 22). Two connectors are expressly disclosed (see figure 6, element 62). It would have been obvious to one of ordinary skill in the art at the time of invention/filing to locate the electrical connections for the heating coil of Thorens et al. on the end wall as disclosed by Newton. The results would have been predictable (i.e. power supplied to the heating coil) and would have been within the ability of one of ordinary skill.
Claim(s) 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorens et al. (US 20090272379 A1), Kolodziej (US 3,918,464), Zhongshan et al. (WO 2010118644 A1), and Newton (US 2013/0228191) as applied to claim 31 above and in further view of Levin et al. (US 2013/0298905).
Regarding claim 32, Thorens et al. and the secondary references already applied do not disclose a device that has coupling features on opposite exterior surfaces (i.e. the device is not cylindrical in shape). However, it is well known in the art to make smoking articles in different shapes and use coupling features. For example, Levin et al. disclose coupling features on opposite exterior surfaces (see Fig. 3D, element 3’) and cooperating coupling features on another portion (see Fig. 3B, elements 3 and 3’). Levin et al. illustrate a first coupling feature (labeled 3’), a second coupling feature (unlabeled fastener identical to 3’ but on opposite side), a third coupling feature (3) and a fourth coupling feature (unlabeled fastener identical to 3 but on opposite side). It would have been obvious to one of ordinary skill in the art at the time of invention to form the smoking articles of Thorens et al. and Newton in the shape of Levin et al. and
PNG
media_image6.png
577
251
media_image6.png
Greyscale
use the coupling features of Levin et al. to secure separate segments of the device together including the reservoir of Thorens et al. with the heating chamber.
Regarding claim 33, Newton discloses an alternative wick structure to that of Thorens et al. with a wick passing through two opposed windows into the reservoir.
It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the arrangement of Newton in the invention of Thorens et al. to provide additional or redundant supply of liquid to the wick.
Regarding claim 34, Thorens et al. illustrates two ends of the heating coil 209 and expressly discloses that the, “Ends of the heating coil 209 are in contact with the electrical contacts 113 on the shell.” [0043]. Therefore, the heating coil ends inherently exit through openings in the heating chamber in order to contact the electrical contacts.
Regarding claim 35, it is notoriously well known that the aerosol generating articles of Thorens et al, Newton, and others are expressly designed to form aerosols that contain nicotine and an aerosol forming compound, also known as humectants (e.g. glycerin, propylene glycol, etc.). Thorens et al. disclose that suitable aerosol formers are glycerine and propylene glycol [0022]. Newton discloses that “Nicotine has been added to the atomization liquid in prior art electronic cigarettes,” [0004]. It would have been obvious, and notoriously well known, to use nicotine and aerosol forming materials such a glycerin and propylene glycol in the references cited to generate nicotine containing vapor for consumption.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael J Felton/Primary Examiner, Art Unit 1747