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 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: permeability control element in claim 16-17, 19-20, 22, and 28. Although gel composition is an additional limitation of the permeability control element, gel composition is not considered to add sufficient structure to perform the recited structure because merely requiring a gel compositions does not require a gel composition with a particular transition temperature from solid to liquid having the required permeability characteristics.
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.
Thus, permeability control element is interpreted as comprising a gel with a composition configured to be a substantially fluid impermeable solid at a temperature below the permeability transition temperature of the gel composition, and fluid permeable liquid at a temperature above the permeability transition temperature of the gel composition.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-31 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Regarding claims 16-17, although the claims recite at least one permeability control element, where the permeability control element is interpreted as a gel with a particular composition to transition from a fluid impermeable solid to a fluid permeable liquid, the present Specification does not disclose to one of ordinary skill in the art how to configure the permeable control element to function as claimed, such that when it is heated to above the permeability transition temperature and transitions from a solid to a liquid, the liquid remains between the two tubes and allows fluid to permeate through the channel. It is understood that liquids do not have a shape of their own. The Specification does not reasonably suggest to one of ordinary skill in the art how the liquid is contained in the outer channel to perform as functionally required.
Regarding claims 18-31, these claims are considered indefinite based on their dependency from an indefinite base claim.
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 16-31 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.
Regarding claims 16-17, these claims are indefinite because the claims require that the at least one permeability control element, where permeability control element is interpreted as comprising a gel with a composition configured to be a substantially fluid impermeable solid at a temperature below the permeability transition temperature of the gel composition, and fluid permeable liquid at a temperature above the permeability transition temperature of the gel composition. These claims further require that the at least one permeability control element is disposed in the outer channel formed between the outer tube and the inner tube, and while in solid phase block fluid flow through the outer channel, and when in liquid phase allow fluid to pass through the liquid. However, while a liquid is considered fluid permeable, one of ordinary skill in the art would not know how to configure the permeable control element to function as claimed, such that when it is heated to above the permeability transition temperature and transitions from a solid to a liquid, the liquid remains between the two tubes and allows fluid to permeate through the channel. It is understood that liquids do not have a shape of their own. The claims do not reasonably suggest to one of ordinary skill in the art how the liquid is contained in the outer channel to perform as functionally required.
Regarding claims 18-31, these claims are considered indefinite based on their dependency from an indefinite base claim.
Allowable Subject Matter
Claims 16-31 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter: Beard et al. (US 2012/0255569 A1) is the closest prior art of record. Beard discloses an aerosol generating article having an upstream end and a downstream end, the aerosol generating article defining a longitudinal direction between the upstream end and the downstream end, the aerosol-generating article comprising: an aerosol-forming substrate; a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction, the tubular element comprising an inner tube and an outer tube, the outer tube being disposed around the inner tube, wherein an outer airflow channel is longitudinally delimited by the inner tube and the outer tube, wherein an inner airflow channel is longitudinally delimited by the inner tube, and wherein at least the inner airflow channel is configured for substrate aerosol to flow towards the downstream end; a flavour substrate disposed downstream of the aerosol-forming substrate, (see annotated fig 2 below).
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Beard does not reasonably disclose the filter material comprising a permeability control element configured to comprise a gel with a composition configured to be a substantially fluid impermeable solid at a temperature below the permeability transition temperature of the gel composition, and fluid permeable liquid at a temperature above the permeability transition temperature of the gel composition. One of ordinary skill in the art would not provide such a gel composition in the outer channel because on transitioning to a liquid at the permeability transition temperature, the inner tube would not be held in place and the now liquid gel composition would leak into the tobacco rod and/or the downstream elements, and there would be no expectation of success in such a configuration.
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 16-19, and 23-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 19, and 25-31 of copending Application No. 18264263. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 16, 18264263 discloses:
An aerosol-generating article having an upstream end and a downstream end, (claim 16), the aerosol-generating article defining a longitudinal direction between the upstream end and the downstream end, (claim 16), the aerosol-generating article comprising: an aerosol-forming substrate, (claim 16); a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction, (claim 16), the tubular element comprising an inner tube and an outer tube, (claim 25), the outer tube being disposed around the inner tube, (claim 25), wherein an outer airflow channel is longitudinally delimited by the inner tube and the outer tube, (claim 25), wherein an inner airflow channel is longitudinally delimited by the inner tube, (claim 25), and wherein at least the inner airflow channel is configured for substrate aerosol to flow towards the downstream end, (claim 25); a flavour substrate disposed downstream of the aerosol-forming substrate, (claim 16); and at least one permeability control element, comprising a gel composition, (claim 27 the at least one permeability control element interpreted as comprising a gel composition, Spec pg 24 line 26), wherein the at least one permeability control element is configured to be fluid permeable when a temperature of the at least one permeability control element is equal to or greater than a permeability transition temperature of the permeability control element, (claim 27), wherein the at least one permeability control element is further configured to be substantially fluid impermeable when the temperature of the at least one permeability control element is lower than the permeability transition temperature of the permeability control element, (claim 27), and wherein the at least one permeability control element is disposed within the outer airflow channel, (claim 27), the at least one permeability control element being further configured to prevent a fluid from flowing along the outer airflow channel downstream of the permeability control element when the temperature of the at least one permeability control element is lower than the permeability transition temperature of the permeability control element, (claim 27), and to allow a fluid to flow along the outer airflow channel downstream of the permeability control element when the temperature of the at least one permeability control element is equal to or greater than the permeability transition temperature of the permeability control element, (claim 27).
Regarding claim 17, 18264263 discloses:
An aerosol-generating article having an upstream end and a downstream end, (claim 16), the aerosol-generating article defining a longitudinal direction between the upstream end and the downstream end, (claim 16), the aerosol-generating article comprising: an aerosol-forming substrate, (claim 16); a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction, (claim 16), the tubular element comprising an inner tube and an outer tube, (claim 25), the outer tube being disposed around the inner tube, (claim 25), wherein an outer airflow channel is longitudinally delimited by the inner tube and the outer tube, (claim 25), wherein an inner airflow channel is longitudinally delimited by the inner tube, (claim 25), and wherein at least the inner airflow channel is configured for substrate aerosol to flow towards the downstream end, (claim 25); a flavour substrate disposed downstream of the aerosol-forming substrate, (claim 16); and at least one permeability control element, comprising a gel composition, (claim 27 the at least one permeability control element interpreted as comprising a gel composition, Spec pg 24 line 26), and wherein the at least one permeability control element is disposed within the outer airflow channel, (claim 27), the at least one permeability control element being further configured to prevent a fluid from flowing along the outer airflow channel downstream of the permeability control element when the temperature of the at least one permeability control element is 20 degrees Celsius and to allow a fluid to flow along the outer airflow channel downstream of the permeability control element when the temperature of the at least one permeability control element is 85 degrees Celsius, (claim 19, reads on these limitations by virtue of disclosing using a permeability transition temperature of between 70 and 80 C).
Regarding claim 18, 18264263 discloses:
The aerosol-generating article according to claim 16, wherein the flavour substrate is disposed within the outer airflow channel, (claim 26).
Regarding claim 19, 18264263 discloses:
The aerosol-generating article according to claim 18, wherein the flavour substrate is a permeability control element, (claim 28).
Regarding claim 23, 18264263 discloses:
The aerosol-generating article according to claim 19, wherein the flavour substrate extends longitudinally along the entire outer airflow channel, (claim 26 easonably including embodiments where the flavor substrate extends longitudinally along the entire outer airflow channel).
Regarding claim 24, 18264263 discloses:
The aerosol-generating article according to claim 16, further comprising an air inlet configured to allow for intake of outside air into the outer airflow channel, (claim 16).
Regarding claim 25, 18264263 discloses:
The aerosol-generating article according to claim 24, wherein a spanning element is disposed within the outer airflow channel upstream of the flavour substrate, and wherein the air inlet is disposed downstream of the spanning element, (claim 29).
Regarding claim 26, 18264263 discloses:
The aerosol-generating article according to claim 24, wherein the flavour substrate is disposed downstream of the air inlet, (claim 16).
Regarding claim 27, 18264263 discloses:
The aerosol-generating article according to claim 16, further comprising a filter disposed downstream of the tubular element, (claim 30).
Regarding claim 28, 18264263 discloses:
The aerosol-generating article according to claim 16, wherein the permeability transition temperature of the at least one permeability control element is a phase transition temperature of the at least one permeability control element, (claim 27).
Regarding claim 29, 18264263 discloses:
The aerosol-generating article according to claim 16, wherein the flavour substrate comprises a flavour material, (claim 16).
Regarding claim 30, 18264263 discloses:
The aerosol-generating article according to claim 16, wherein the flavour material is a gel composition, (claim 16).
Regarding claim 31, 18264263 discloses:
An aerosol-generating system comprising: the aerosol-generating article according to claim 16; and an aerosol-generating device comprising a heater, the heater comprising a substrate heating element configured to heat the aerosol-generating article and a downstream heating element disposed downstream of the substrate heating element, (claim 31).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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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.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747