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 .
Status of the Claims
Claims 1-15 are canceled and 16-29 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
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.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Maeder (U.S. Patent No. 11,528,941) in view of Ampolini (US20170071249A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims are directed to an aerosol generating device comprising:
an aerosol-generating article comprising an aerosol-forming substrate and an aerosol- forming marker;
an aerosol-generating device configured to receive the aerosol-generating article, wherein the aerosol-generating device comprises:
control electronics
an electrochemical sensor switch operably coupled to the control electronics, the electrochemical sensor switch being configured to change from a first state to a second state
a heater operably coupled to the control electronics via the electrochemical sensor switch, the control electronics being configured to cause the heater to deactivate when the electrochemical sensor switch changes from the first state to the second state
a reservoir containing the aerosol- forming marker Rejected Claim 1 differs from the conflicting claims in that Rejected Claim recites:
the reservoir comprising a capsule comprising an outer shell formed from a thermally degradable material
the electrochemical sensor switch being configured to change from a first state to a second state when the electrochemical sensor switch detects an amount of the aerosol-forming marker that is above or below a predetermined threshold amount.
In regards to (I.), Maeder ‘941 discloses the container having a volatile carrier for transporting the product identifying compound and releasing it through dissipation (col. 3 lines 55-66).
Ampolini directed towards a reservoir for aerosol delivery devices, discloses a capsule comprising a shell material having a somewhat rigid exterior which can be made of wax and which melts when heated and releases materials [0066].
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify volatile carrier of Maeder ‘177 to be substituted with the wax capsule of Ampolini in order to achieve a desired rate of release of the product identifying compound through melting of the capsule when heated [0066-67], because both are directed towards carrying compound materials and the release of the materials, and this merely involves the substitution of a known structure and material in the art in order to yield predictable results.
In regards to II. Maeder ‘941 discloses an electrochemical sensor which detects a concentration of the product identifying compound and thus detects if it is present or not, which can be interpreted as a threshold amount of greater than 0. Thus, the primary reference reads on this limitation.
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 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.
Claim(s) 16-24 and 26-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maeder (US20190307177A1, as cited in the IDS dated 06/02/2023), further in view of Ampolini (US20170071249A1).
In regards to Claim 16, Maeder ‘177 discloses:
An aerosol generating system (Abstract)
An aerosol generating substrate (Abstract)
The aerosol generating article configured to receive a container with an aerosol generating substrate [0002]
an electrochemical sensor switch operably coupled to the control electronics, the electrochemical sensor switch being configured to change from a first state to a second state (Abstract, Claim 1)
a heater operably coupled to the control electronics [0059]
a container as a reservoir comprising a product identifying compound as an aerosol forming marker (Abstract)
a container comprising a volatile carrier as a capsule for releasing the aerosol forming marker [0017]
Maeder ‘177 does not appear to explicitly disclose:
the electrochemical sensor switch configured to detect an amount of the aerosol forming marker that is above or below a predetermined threshold amount
the volatile carrier comprising an outer shell formed from a thermally degradable material
In regards to (I.), Maeder ‘177 discloses an electrochemical sensor, which detects a concentration of the product identifying compound and thus detects if it is present or not, which can be interpreted as a threshold amount of greater than 0. Thus, the primary reference reads on this limitation.
In regards to (II.), Maeder ‘177 discloses the container having a volatile carrier for transporting the product identifying compound and releasing it through dissipation (col. 3 lines 55-66).
Ampolini directed towards a reservoir for aerosol delivery devices, discloses a capsule comprising a shell material having a somewhat rigid exterior which can be made of wax and which melts when heated and releases materials [0066].
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify volatile carrier of Maeder ‘177 to be substituted with the wax capsule of Ampolini in order to achieve a desired rate of release of the product identifying compound through melting of the capsule when heated [0066-67], because both are directed towards carrying compound materials and the release of the materials, and this merely involves the substitution of a known structure and material in the art in order to yield predictable results.
In regards to Claim 17-18, modified Maeder ‘177, as applied to Claim 1, discloses a container comprising a wax capsule which can be removed from the article and replaced with a fresh container [0002], but does not appear to explicitly disclose a plurality of containers.
It would have been obvious to one of ordinary skill in the art to provide more than one container with a wax capsule because it involves duplication of parts. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B.
In regards to Claim 19-21, as discussed above, the capsules which carry the product identifying compound are contained in a wax shell, which reads upon an outer shell formed from a thermally degradable material or wax.
Therefore, the structural limitations of Claim 4-6 are met.
In regards to Claim 22, Maeder ‘177 discloses the product identifying compound 155, located at a radially outer portion of the container comprising the aerosol generating substrate. By virtue of connection between the container and aerosol forming marker, the aerosol forming marker is located at a radially outer portion of the aerosol generating substrate (Fig. 3).
In regards to Claim 23, Maeder ‘177 discloses the product identifying compound 155, located at a radially outer portion of the container comprising the aerosol generating substrate (Fig. 3) but does not disclose it to be located at a radially central portion of the aerosol forming substrate.
However, it would have been obvious to one of ordinary skill in the art to move the location of the product identifying compound 155 to be rearranged to be located at a radially central portion of the container of Maeder ‘177. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
In regards to Claim 24, Maeder ‘177 discloses non-limiting examples of product identifying compounds include isomeric compounds, such as xylene isomers, and amine-containing compounds [0018].
In regards to Claim 26, Maeder ’177 discloses the electrochemical sensor switch (10, 20) has a different conductivity in the first state than in the second state (Abstract).
In regards to Claim 27-28, Maeder ’177 the electrochemical sensor switch may comprise chemiresistive or semiconductive materials, such as carbon nanotubes coated with a polythiophene, such as a calixarene-substituted type of material as host-guest chemistry, as well as graphene substrates impregnated with a polythiophene, or carbon nanotube/metalloporphyrin composites. [0053]. In regards to Claim 29, Maeder ’177 discloses the electrochemical sensor may comprise of carbon nanotube [0024].
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maeder (US20190307177A1, as cited in the IDS dated 06/02/2023) and Ampolini (US20170071249A1), further in view of Hood (US 8439258 B1).
In regards to Claim 25, Maeder ’177 discloses a product identifying compound, but does not appear to explicitly disclose the product identifying compound to be a gel substance.
However, Hood directed towards a detection system using a chemical signature marker, discloses a marker 16 which can be a gel.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art the art to modify the product identifying compound of Maeder ‘177 to be made of a gel, because both are directed towards detection systems using markers, and this merely involves the substitution of a known material in the art in order to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Timothey T Tran whose telephone number is (571)272-3717. The examiner can normally be reached Monday-Thursday 8:30-5:00 ET.
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/TIMOTHEY TUAN-KHA TRAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
