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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9, 13, 18-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention
With respect to claim 1, in line 13 “jig voids” are referenced in plural form. In line 18 “jig void” is referenced in singular form. This is indefinite because it is unclear if each of the jig voids have the stepped portion, or if one of the jig voids has the stepped portion.
Claims 2-9 are rejected for depending from claim 1.
Claim 2 is indefinite also for reciting “jig void”, for the same reasons as noted above.
Claim 3 is indefinite also for reciting “jig void”, for the same reasons as noted above.
Claim 13 recites the limitation "the press" in line 3. There is insufficient antecedent basis for this limitation in the claim.
With respect to claim 18, in line 11 “jig voids” are referenced in plural form. In lines 16 and 22 “jig void” is referenced in singular form. This is indefinite because it is unclear if each of the jig voids have the stepped portion, or if one of the jig voids has the stepped portion.
Claims 19-25 are rejected for depending from claim 18.
With respect to claim 26, in lines 6 and 7 “jig voids” are referenced in plural form. In line 14 “jig void” is referenced in singular form. This is indefinite because it is unclear if each of the jig voids have the stepped portion, or if one of the jig voids has the stepped portion.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,744,294. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claim 1, U.S. Patent No. 11,744,294 claims a vaping device packaging system comprising: a first tray formed of deformable material for holding vaping device bodies, the first tray having a plurality of voids, each of the voids holding a portion of a vaping device body to be filled with a substance, and wherein the first tray and the vaping device bodies are covered by a first cover; a second tray formed of deformable material for holding vaping device mouthpieces, the second tray having a plurality of voids allowing the vaping device mouthpieces to be vertically aligned with the vaping device bodies of the first tray, each of the voids holding a portion of a vaping device mouthpiece to cap a corresponding vaping device body; wherein the first tray is capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies, and wherein the jig voids comprise a stepped portion within the jig voids, the stepped portion forming a concentric circle with the jig voids; and wherein the second tray is capable of being placed over the first tray to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to press-fit the vaping device mouthpieces onto the corresponding vaping device bodies, the stepped portion of the jig void for transferring pressure from the vaping device mouthpieces to a corresponding bottom side of a tank portion of the vaping device bodies when the press exerts even pressure on the vaping device mouthpieces (Claim 1).
With respect to claim 2, U.S. Patent No. 11,744,294 claims wherein the plurality of jig voids have a diameter sized to receive a bottom side of the vaping device body and wherein the stepped portion of the jig void has a diameter to receive a tank bottom side (Claim 2).
With respect to claim 3, U.S. Patent No. 11,744,294 claims wherein the stepped portion of the jig void has a width of from about 0.7 mm to about 0.9 mm (Claim 3).
With respect to claim 4, U.S. Patent No. 11,744,294 claims wherein the second tray and the vaping device mouthpieces are covered by a second cover (Claim 4).
With respect to claim 5, U.S. Patent No. 11,744,294 claims wherein the jig voids are circular (Claim 5).
With respect to claim 6, U.S. Patent No. 11,744,294 claims comprising at least one first tray in a first package, at least one second tray in the first package, and at least one jig in the first package (claim 6).
With respect to claim 7, U.S. Patent No. 11,744,294 claims wherein the second tray is capable of being placed over the first tray to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to one-way press-fit the vaping device mouthpieces onto the corresponding vaping device bodies (Claim 7).
With respect to claim 8, U.S. Patent No. 11,744,294 claims wherein the first tray comprises five rows of ten voids (Claim 8).
With respect to claim 9, U.S. Patent No. 11,744,294 claims wherein the first tray is capable of holding a number of vaping device bodies to allow the press to exert from around 200 pounds of pressure to around 900 pounds of pressure per press to press-fit the vaping device mouthpieces onto the corresponding vaping device bodies with a single press (Claim 9).
With respect to claim 10, U.S. Patent No. 11,744,294 claims a vaping device packaging system comprising: a first tray for holding vaping device bodies, the first tray having a plurality of voids, the voids holding a portion of a vaping device body to be filled with a substance, and wherein the first tray and the vaping device bodies are covered by a first cover; a second tray for holding vaping device mouthpieces, the second tray having a plurality of voids allowing the vaping device mouthpieces to be vertically aligned with the vaping device bodies of the first tray, each of the voids holding a portion of a vaping device mouthpiece to cap a corresponding vaping device body; and wherein the first tray is capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies (Claim 10).
With respect to claim 11, U.S. Patent No. 11,744,294 claims wherein at least one of the plurality of jig voids comprises a stepped portion forming a concentric circle with the plurality of jig voids (Claim 11).
With respect to claim 12, U.S. Patent No. 11,744,294 wherein the second tray is capable of being placed over the first tray to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to press-fit the vaping device mouthpieces onto the corresponding vaping device bodies.
With respect to claim 13, U.S. Patent No. 11,744,294 claims wherein the stepped portion of the jig void prevents pressure from being transferred from the vaping device mouthpieces to bottom side of the vaping device bodies when the press exerts an even pressure on the vaping device mouthpieces (Claim 13).
With respect to claim 14¸ U.S. Patent No. 11,744,294 claims wherein a distance from an outer diameter of the jig void to an inner diameter of the stepped portion is about 0.7 mm to about 0.9 mm (Claim 14).
With respect to claim 15, U.S. Patent No. 11,744,294 claims wherein the voids of the second tray are vertically alignable with the corresponding voids of the first tray (Claim 15).
With respect to claim 16, U.S. Patent No. 11,744,294 claims wherein the second tray and the vaping device mouthpieces are wrapped in a second cover (Claim 16).
With respect to claim 17, U.S. Patent No. 11,744,294 claims wherein the first tray and second tray are formed of deformable material (Claim 17).
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) 10-15 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DAVIS et al. (US 2020/0221769).
With respect to claim 10, DAVIS et al. discloses a system for manufacturing filled vaporizer cartridges (Abstract; Title) comprising, a cartridge tray (e.g., first tray) formed of a for holding reservoir components (e.g., vaping device bodies), the first tray having a plurality of wells (e.g., voids), each of which hold said vaping device bodies to be filled (Paragraphs [0028], [0056-[0058]; Figure 7); and mouthpiece assembly support (e.g., second tray) for holding mouthpieces (e.g., vaping device mouthpieces), the second tray having a plurality of voids allowing the mouthpieces to be vertically aligned with the vaping device bodies of the fist tray in order to cap respective vaping device bodies with the mouthpiece in a press-fit manner (Paragraphs [0059]-[0062]). As seen in figures 9, 10 and 13, the first tray is either covered by the second tray, or by press plate, 1106, and bed, 1105 of a press machine (Paragraph [0060]).
The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies is a recitation of functional limitations. The claim does not necessitate the inclusion of the jig, per se, and therefore the jig voids does not impart patentability to the claims. Such a jig is capable of being used merely by providing one with the claimed features. Specifically, the first tray is placed on a bed, 1105, having alignment pins (e.g., a jig) (Paragraph [0060]). Thus, simply by including corresponding voids into the jig, the first tray is capable of being placed over said jig in the same manner it is currently placed over the bed, 1105.
With respect to claim 11, The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “the jig voids comprise a stepped portion forming a concentric circle with the jig voids” is a recitation to a structure of a functional limitation. The claim does not necessitate the inclusion of the jig, per se, and therefore the step of said jig voids does not impart patentability to the claims. Such a jig is capable of being used merely by providing one with the claimed features.
With respect to claim 12, DAVIS et al. discloses that the second tray is capable of being placed over the first tray, and the placed into a press to press fit the mouthpiece to the body (Paragraphs [0059]-[0062]).
The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to one-way press-fit the vaping device mouthpieces onto the corresponding vaping device bodies” is a functional limitation related to the use of the press. As noted above, DAVIS et al. uses a press and is therefore capable of using a press in the manner claimed.
With respect to claim 13, as noted above, the jig is not included in the claimed device an is only recited as being capable of being used with the trays. Given that the first tray is capable of being used with a jig, simply by providing a jig having the claimed stepped portion that does not interact with a bottom side of the vaping device bodies, then during application of pressure, the bottom of said bodies would not exert pressure thereon. Moreover, there is no indication that the vaping device bodies of DAVIS et al. extend beyond the first tray, or that the bottom of the bodies are open to contact with the jig, per se. Thus, DAVIS et al. does not indicate that the jig is even capable of applying pressure to the bottoms of the vaping device bodies during the application of pressure.
With respect to claim 14, The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies, and wherein the jig voids comprise a stepped portion within the jig voids, the stepped portion forming a concentric circle with the jig voids” is a recitation of functional limitations. The claim does not necessitate the inclusion of the jig, per se, and therefore the diameter of said jig voids does not impart patentability to the claims. Such a jig is capable of being used merely by providing one with the claimed features.
With respect to claim 15, DAVIS et al. discloses that the second tray having a plurality of voids allowing the mouthpieces to be vertically aligned with the vaping device bodies of the fist tray in order to cap the bodies with the mouthpiece in a press-fit manner (Paragraphs [0059]-[0062]). Given that the two components are vertically aligned while being within respective voids, the voids are also necessarily vertically aligned.
With respect to claim 17, DAVIS et al. discloses that the first tray is formed of a substantially rigid material for holding reservoir components (e.g., vaping device bodies) (Paragraph [0058]) and the second tray is formed of an elastically deformable material for holding mouthpieces (Paragraphs [0059]-[0062]).
DAVIS et al. notes that the material of the first tray is “substantially rigid” (Paragraph [0058]). The scope of “substantially rigid” includes not entirely rigid, and thus includes slightly deformable material.
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.
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Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over DAVIS et al. (US 2020/0221769) in view of ATG Pharma (Pre-loaded Cartridge Filling and Capping).
With respect to claim 16, DAVIS et al. does not explicitly disclose that the second tray and vaping device mouthpieces are wrapped in a cover. ATG Pharma discloses pre-loaded cartridges and mouthpieces (0:08 – removing trays from a box: screenshot and 0:43 – removing caps or mouthpieces from box: screenshot) that are within a box so that labor costs can be saved (Summary). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the loaded first and second trays of DAVIS et al. wrapped in a box, as taught by ATG Pharma, so that the end user can be provided with these preloaded trays and remove them from the box prior to manufacturing, thereby saving labor costs.
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Claim(s) 1-5, 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over DAVIS et al. (US 2020/0221769) in view of BOLDRINI (US 2018/0170588).
With respect to claim 1, DAVIS et al. discloses a system for manufacturing filled vaporizer cartridges (Abstract; Title) comprising, a cartridge tray (e.g., first tray) formed of a substantially rigid material for holding reservoir components (e.g., vaping device bodies), the first tray having a plurality of wells (e.g., voids), each of which hold said vaping device bodies to be filled (Paragraphs [0028], [0056-[0058]; Figure 7); and mouthpiece assembly support (e.g., second tray) formed of an elastically deformable material for holding mouthpieces (e.g., vaping device mouthpieces), the second tray having a plurality of voids allowing the mouthpieces to be vertically aligned with the vaping device bodies of the fist tray in order to cap the bodies with the mouthpiece in a press-fit manner (Paragraphs [0059]-[0062]). As seen in figures 9, 10 and 13, the first tray is either covered by the second tray, or by press plate, 1106, and bed, 1105 of a press machine (Paragraph [0060]).
DAVIS et al. notes that the material of the first tray is “substantially rigid” (Paragraph [0058]). The scope of “substantially rigid” includes not entirely rigid, and thus includes slightly deformable material.
The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies, and wherein the jig voids comprise a stepped portion within the jig voids, the stepped portion forming a concentric circle with the jig voids” is a recitation of functional limitations. As seen in Figure 13 and Paragraph [0060], the first tray is capable of being placed on a bed, 1305. As such, the first tray is also capable of being placed on other structures, including, a jig with the disclosed voids in claim 1, merely by providing such a jig.
It is also noted that the jig is not recited as a structure of the apparatus, but instead, is recited as being able to be used with the first tray.
Additionally, “to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to press- fit the vaping device mouthpieces onto the corresponding vaping device bodies, the stepped portion of the jig void for transferring pressure from the vaping device mouthpieces to a corresponding bottom side of a tank portion of the vaping device bodies when the press exerts even pressure on the vaping device mouthpieces” is also a functional recitation of the device. It is noted that the press also is not claimed as part of the apparatus, and is only recited as being used with the trays. Given that DAVIS et al. already discloses the use of a press, the vertically aligned trays are also capable of being pressed evenly to press the two trays together by ensuring that the press provided is set up to do so.
The interaction of the jig with the vaping device bodies during pressing would appear to require the voids of the first tray to pass completely through the tray (Also see instant figures 3 and 5) such that a structure placed beneath the first tray could then interact with the vaping device bodies. DAVIS et al. does not appear to disclose such a feature or capability of the first tray.
BOLDRINI discloses a machine for producing electronic cigarette cartridges (Abstract). The cartridge portions are held in a tray, 27, having cylindrical holes therein (Paragraph [0036]) that pass entirely through the tray (Figure 4) so that a device, 53, can interact with the cartridge (Paragraphs [0061]-[0062]; Figure 13) in order to fit components thereto.
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a first tray of DAVIS et al. with voids that go completely through the tray, as taught by BOLDRINI so that other components can be assembled to the bottom of the cartridge vaping devices.
With respect to claim 2, The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “capable of being placed over a jig having a plurality of jig voids corresponding to the voids for holding the vaping device bodies, and wherein the jig voids comprise a stepped portion within the jig voids, the stepped portion forming a concentric circle with the jig voids” is a recitation of functional limitations. The claim does not necessitate the inclusion of the jig, per se, and therefore the diameter of said jig voids does not impart patentability to the claims. Such a jig is capable of being used merely by providing one with the claimed features.
With respect to claim 3, as noted above, the claim does not necessitate the inclusion of the jig, per se, and therefore the width of the stepped portion does not impart patentability to the claims. Such a feature is capable of interacting with the tank bottom side by simply providing a jig having the claimed features.
With respect to claim 4, DAVIS et al. discloses that the stacked and aligned trays are placed between a press plate and bed (Paragraph [0060]; Figure 12). Thus, the second tray and mouthpieces are implicitly covered by the press plate.
With respect to claim 5, The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, the claim does not necessitate the inclusion of the jig, per se, and therefore the shape of said jig voids does not impart patentability to the claims. Such a jig is capable of being used merely by providing one with the claimed features.
With respect to claim 7, DAVIS et al. discloses that the second tray is capable of being placed over the first tray, and the placed into a press to press fit the mouthpiece to the body (Paragraphs [0059]-[0062]).
The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to one-way press-fit the vaping device mouthpieces onto the corresponding vaping device bodies” is a functional limitation related to the use of the press. As noted above, DAVIS et al. uses a press and is therefor capable of using a press in the manner claimed.
With respect to claim 8, DAVIS et al. discloses that the tray can include a 10x10 array of voids (Paragraph [0058]), or even an array of voids that can hold 50 units (Paragraph [0062]). As seen in figure 7, the tray has an array of 10x10 voids. As seen in figure 10, the array comprises 4 rows of 10 voids. Therefore, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide 5 rows of 10 voids in the first tray of DAVIS et al., so that the tray can hold 50 units therein.
With respect to claim 9, DAVIS et al. discloses that the second tray is capable of being placed over the first tray, and the placed into a press to press fit the mouthpiece to the body (Paragraphs [0059]-[0062]).
The courts have generally held that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I
In the instant case, “to allow a press to exert even pressure on the vaping device mouthpieces of the second tray to one-way press-fit the vaping device mouthpieces onto the corresponding vaping device bodies” is a functional limitation related to the use of the press. As noted above, DAVIS et al. uses a press and is therefore capable of using a press in the manner claimed, by simply applying a pressure in the claimed range.
Allowable Subject Matter
Claims 18-26 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The cited art does not necessarily teach the stepped portions of the jig voids, and then filling the cartridges using the claimed needle, per se.
Conclusion
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/ALEX B EFTA/Primary Examiner, Art Unit 1745