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 .
Election/Restrictions
Applicant's election with traverse of Species F in the reply filed on 2/17/2026 is acknowledged. The traversal is on the ground(s) that the International Searching Authority did not reject the claims for lack of unity of invention during its review based on the PCT Rules and did not require such extensive separation of the claimed features for its examination of these claims. Applicant questions the need, as well as the ability, to select a single species or a single grouping of patentably indistinct species. Applicant argues the various options set out in the dependent claims relate to alternative solutions to the general problem of how to suitable retain each of a plurality of consumables within a device.
This is not found persuasive because examiners at a national stage application are permitted to determine that a national stage application lacks unity of invention (MPEP 1893.03(d)). Examiners at the national stage are not bound by whether a search authority at the international stage finds unity of invention. As set forth in the restriction requirement, there is no special technical feature common to all of the species in view of the prior art citations and thus unity of invention is lacking. Applicant's arguments have not established that a special technical feature is present amongst the various identified species. Regarding the need for restriction, the claims present varying solutions to the same problem wherein the solutions described in the dependent claims are directed to distinct, mutually exclusive embodiments with substantial structural differences (e.g., hinged caps, rotating end caps, resilient rings, springs of various forms, pivoting cams). The claimed structures not obvious variants of each other and would require different fields of search. Further, prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-7, 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: "retention apparatus" in claim 1. "Apparatus" is nonce term and the preceding term "retention" only describes functionality without signifying structure. The remainder of the limitation, "configured to hold in position, one at a time, each of a plurality of consumables comprising aerosol-generating material of different sizes," concerns functional language and does not recite sufficient structure for performing the claimed function.
Claims 2-4 and 8 recite sufficient structure for performing the function of the retention apparatus and are not interpreted under 35 U.S.C. 112(f).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doyle (US 20200268047).
Regarding claim 1, Doyle discloses a non-combustible aerosol provision device for generating an aerosol from aerosol-generating material comprised in a consumable (see aerosol-generating system 1 with aerosol-generating article 10), the non-combustible aerosol provision device comprising:
a retention apparatus configured to hold in position, one at a time, each of a plurality of consumables comprising aerosol-generating material of different sizes (Doyle discloses an adjustable opening for holding article 10 in place--see embodiments of Fig. 3-7). The adjustable opening is capable of holding articles of different sizes.
As to the recitation of the plurality of consumables having different size, Examiner notes that the claims are directed towards a non-combustible aerosol provision device with a retention apparatus. The consumable having different sizes concerns the material to be worked upon and does not define structure not present in the device of Doyle.
Regarding claim 2, Doyle discloses a resilient member which enables the retention apparatus to adopt each of a plurality of configurations in order to hold consumables of different widths (see Fig. 3A-3C wherein holding member 360 is biased via a spring to apply a biasing force on the holding member to hold the article 10; [0065]; see also Fig. 6A-6C embodiment wherein holding member 660A,660B engage with the consumable, Doyle discloses holding member 660A,660B are substantially similar to holding member 360; see also holding members 560 in Fig. 5).
As to the recitation of the plurality of consumables having different width, Examiner notes that the claims are directed towards a non-combustible aerosol provision device with a retention apparatus. The consumable having different widths concerns the material to be worked upon and does not define structure not present in the device of Doyle.
Regarding claim 3, Doyle discloses the at least one resilient member enables the retention apparatus to define an initial arrangement which provides a gap of an initial size into which each of the plurality of consumables are to be inserted; and applying a force against the at least one resilient member causes the initial size of the gap to change to accommodate and hold, one at a time, each of the plurality of consumables (Doyle discloses a biasing member that urges the holding member toward a set position with a gap and force is applied to move the holding members to change the size of the gap, [0031,0032,0065,0072-0075]).
Regarding claim 4, Doyle discloses the at least one resilient member comprises two or more resilient members which are deflectable away from the initial arrangement to change a size of the gap (see two holding members 560A, 560B in Fig. 5 or 660A, 660B in Fig. 6 which contact the consumable one at a time).
Regarding claim 24, Doyle discloses a non-combustible aerosol provision device and one or more consumable (see aerosol-generating system 1 with aerosol-generating article 10),
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Doyle (US 20200268047).
Regarding claim 8, Doyle discloses the retention apparatus comprises a moveable element which moves between a plurality of positions with respect to an end of the non-combustible aerosol provision device in order to transition the retention apparatus between a corresponding plurality of different initial arrangements (see moveable control member 668 which slides relative to end of device, [0072-0074]);
each of the plurality of different initial arrangements provides a gap of a different initial size into which the consumables are to be inserted (sliding the member creates different gap sizes, [0072-0074], Fig. 6A-6C).
Doyle does not expressly disclose the two or more resilient members are biased towards the initial arrangement that corresponds to a current position of the plurality of positions of the moveable element; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have applied a biasing force on the resilient members since Doyle discloses the holding members 660A,660B are substantially similar to holding member 360 of the second embodiment ([0074]) and discloses the holding member 360 may be coupled to a biasing member to urge the member to a second position and apply a clamping force against the article 10 ([0065]). One would have been motivated to configure the holding members 660A,660B with a biasing member to ensure the consumable article 10 is clamped within the device.
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 1-4, 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of copending Application No. 18262957 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because '957 similarly discloses a non-combustible aerosol provision device having a consumable holder with at least two selectively engageable gripping members for holding consumable of different sizes. Claim 4 recites a moveable actuator.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18262964 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because '964 similarly discloses a non-combustible aerosol provision device having a consumable holder with first and second retention elements that are configured to allow the opening size to bias against an initial size.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Han (US 20180042299) discloses a spring clamp for holding cigarettes of different sizes (Fig. 6).
Plojoux (US 20150013696) discloses an extractor that holds a consumable (see Fig. 7A,7B)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619