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 .
Response to Amendment
Claims 1-5, 7-9, 25-28 and 30 are withdrawn. Claims 6, 13, 15-17, 19, 21, 23-24 and 29 are cancelled. Claims 10-12, 14, 18, 20 and 22 are presently examined.
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 10-12, 14, 18, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (US 11,330,840) in view of Batista (US 12,161,164) and Zhu (US 9,795,169).
Regarding claim 10, Fernando discloses a shisha device having a cartridge receptacle that contains a cartridge containing an aerosol generating substrate (abstract), which is considered to meet the claim limitation of aerosol generating material, that comprises a susceptor material (column 3, lines 57-58). The cartridge receptacle is considered to meet the claim limitation of heater assembly having a heating chamber. An induction coil induces eddy currents in the susceptor, which results in heating of the cartridge (column 3, lines 59-67), which is considered to be a varying magnetic field. The aerosol is carried into a vessel (figure 1, reference numeral 17) through a conduit (column 13, lines 23-29, figure 1, reference numeral 190). The upper portion of the vessel is considered to be an end support that forms a fluid seal since it directs all the aerosol flow into the conduit. Fernando does not explicitly disclose (a) the coil being located around the susceptor material and (b) a specific sealing structure.
Regarding (a), Batista teaches an aerosol generating device comprising a susceptor arrangement positioned within a cavity and an induction coil (abstract). The induction coil surrounds the susceptor arrangement (column 21, lines 13-20) so that the susceptor can be heated by action of the induction coil (column 9, lines 11-26).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the induction of coil of Fernando with the surrounding of Batista. One would have been motivated to do so since Batista teaches that a surrounding induction coil enables a susceptor to be heated.
Regarding (b), Zhu teaches an electronic cigarette (abstract) having a central air passage tube that is sealed by a sealing ring to prevent air leakage (column 5, lines 14-20, figure 3, reference numeral 1511).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sealing ring to prevent air leakage at the lower portion of the cartridge receptacle of Fernando. One would have been motivated to do so since Fernando discloses a cartridge receptacle that directs air to exit only through a conduit.
Regarding claim 11, Fernando discloses that the cartridge receptacle can be disassembled into parts to allow the cartridge to be inserted (column 8, lines 57-67, column 9, lines 1-6). The open end of the chamber when the parts are disassembled is considered to define an insertion chamber.
Regarding claim 12, modified Fernando teaches all the claim limitations as set forth above. The lower portion of the cartridge receptacle of Fernando is considered to be the first end. The upper portion of the device is defined by an upper part (column 13, lines 65-67, column 14, lines 1-13, figure 2, reference numeral 131), which is considered to meet the claim limitation of a second end support, having a fresh air inlet channel through it (column 13, lines 6-22, figure 1, reference numeral 170). The upper part can be removed from a lower part (column 14, lines 14-18). Modified Fernando does not explicitly teach a second seal located between the upper and lower parts.
Zhu teaches an electronic cigarette (abstract) having a central air passage tube that is sealed by a sealing ring to prevent air leakage (column 5, lines 14-20, figure 3, reference numeral 1511).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sealing ring to prevent air leakage between the upper and lower parts of Fernando. One would have been motivated to do so since Fernando discloses a cartridge receptacle that directs to flow through an upper part without initially reaching a lower part.
Regarding claim 14, Fernando discloses that air enters the device through air inlets in the upper part (column 13, lines 65-67, column 14, lines 1-12, figure 3, reference numeral 171). The fluid path is sealed by the seals previously taught by Fernando as modified by Zhu.
Regarding claim 18, Fernando discloses that aerosol enters through conduit through an aerosol outlet at lower open portion of the cartridge receptacle (column 13, lines 65-67, column 14, lines 1-13, figure 1, reference numeral 180), which is considered to meet the claim limitation of an air inlet since the aerosol enters it.
Regarding claim 20, the fluid seal of modified Fernando is considered to locate the heater since it is between the housing components. The heater is considered to be located in an axial direction since it is located along the axial direction of the device of Fernando (figure 1).
Regarding claim 22, modified Fernando teaches all the claim limitations as set forth above. Fernando additionally discloses that the side wall portion of the receptacle is cylindrical (column 1, lines 39-65). The fluid seal of modified Fernando is considered to locate the heater since it is between the housing components. Modified Fernando does not explicitly teach the outer housing that surrounds the susceptor being tubular.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the outer housing tubular. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
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 10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13 and 15 of copending Application No. 18/245,561 (hereafter referred to as Thomas). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 10, Thomas claims an aerosol provision device having a heater assembly configured to receive aerosol generating material, wherein the heater assembly comprises a susceptor which is heatable by penetration with a varying magnetic field, a fluidly sealed enclosure which defines a cavity, and an inductor coil that at least partially surrounds the fluidly sealed enclosure and heater assembly, wherein the inductor coil is configured to generate the varying magnetic field (claim 1). A fluid seal is located between the fluidly sealed enclosure and the heater assembly (claim 7). An end support is located at one end of the heater assembly (claim 11), which is considered to meet the claim limitation of receiving. Thomas does not explain the aerosol generating material being received within the fluidly sealed enclosure.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the aerosol generating material in the cavity. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding claim 12, Thomas claims the fluidly sealed enclosure comprising a second end support at second end of the heater and a second fluid seal between the second end support and the heater assembly (claim 13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the upper portion of the vessel does not comprise an end support as claimed since it does not receive one end of the heating assembly, (b) that the sealing ring of Zhu does not locate any components, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the term “receiving” does not specifically require that there be some sort of structure into which a different component be inserted. Indeed, definition 5 of the Merriam-Webster Dictionary definition of “receive” is “to support the weight or pressure of.” Therefore, contrary to applicant’s assumption, a component that supports another component is considered to receive that second component.
Regarding (b), applicant assumes that a structure that “locates” a different structure must exert some sort of active force on the different structure. However, definition 2 of the Merriam-Webster Dictionary definition of “locate” is “to set or establish in a particular spot.” A component on which a second component merely rests would be established in a particular spot since the second component is blocked from descending further. A lower component having a seal resting upon it would therefore be considered to locate the seal.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Regarding the rejections for nonstatutory double patenting, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the claims of the copending application differ significantly from the instant claims and are not merely an obvious modification of the instant claims, however, applicant offers no reasoning to support that assertion. The rejections are therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755