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
Amendment filed 12/15/2025 has been entered and fully considered. Claims 1-20 are pending. Claim 1 is amended. Claims 15-20 are new. No new matter is added.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive. Applicant argues that the cited art does not define a continuous external surface along the peripheries of the outer cover and outer surface, per se.
Examiner notes that the previously recited claims did not require this feature. Thus, it was not previously considered. The newly added limitations will be addressed in this Official Correspondence.
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.
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Claims 1 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9, 10 and 18 of copending Application No. 18/266,129
With respect to claim 1, copending Application No. 18/266,129 claims an aerosol generating device comprising a main body configured to receive an aerosol generating article, the main body comprising: an outer casing having an inner surface and an outer surface; an inner casing having an inner surface and an outer surface, the inner casing being positioned inside the outer casing adjacent to the inner surface of the outer casing; an inner cover having an inner surface and an outer surface, the inner cover being secured to a periphery of the inner casing to define a space between the inner surface of the inner cover and the inner surface of the inner casing; an outer cover having an inner surface and an outer surface, the outer cover being positioned over the inner cover, a periphery of the outer cover contacting a periphery of the outer casing (Claim 1); wherein the outer surface of the outer casing and the outer surface of the outer cover define an external surface of the aerosol generating device, and the periphery of the outer cover contacts the periphery of the outer casing so that the outer surface of the outer cover lies substantially flush with the outer surface of the outer casing to define a continuous external surface along the peripheries (Claim 9).
With respect to claims 11 and 12, copending Application No. 18/266,129 claims wherein the outer casing comprises a metal or a plastic material (Claim 2).
With respect to claim 13¸ copending Application No. 18/266,129 claims wherein the aerosol generating device comprises an aerosol generating unit in the space defined between the inner surface of the inner cover and the inner surface of the inner casing, the aerosol generating unit including a cavity for receiving an aerosol generating article (Claim 10).
With respect to claim 14, copending Application No. 18/266,129 claims wherein the metal comprises aluminium. (Claim 18).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 9 of copending Application No. 18/266,129 in view of HENRY, JR. et al. (US 2017/0119053).
With respect to claim 2, copending Application No. 18/266,129 does not explicitly disclose the features of claim 2, HENRY, JR. et al. shows that the outer cover and outer casing are curved in a transverse direction so that the flush surfaces define a curved continuous external surface (Figure 4, annotated below).
[AltContent: textbox (Distal end)][AltContent: arrow][AltContent: textbox (Proximal end)][AltContent: arrow][AltContent: textbox (Curved continuous surface transverse to longitudinal direction )][AltContent: arc][AltContent: arc][AltContent: textbox (Longitudinal direction )][AltContent: connector]
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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 claimed proximal end, distal end, longitudinal direction and curved surface of HENRY, JR et al. to copending Application No. 18/266,129 so that the form and function can be designed after traditional aerosol generating devices.
This is a provisional nonstatutory double patenting rejection.
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Claim 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 9 of copending Application No. 18/266,129 in view of GOGGIN et al. (US 2016/0198771).
With respect to claims 8 and 9¸ copending Application No. 18/266,129 does not explicitly claim that the outer and inner cover are releasable attached by magnets. GOGGIN et al. discloses a vaporizer (Abstract; Title) wherein the flush-fit between the outer body and inner body is maintained by magnetic coupling (Paragraph [0010]). 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 two components of copending Application No. 18/266,129 with magnets, as taught by GOGGIN et al., so that the flush fit between the components can be maintained and the parts can be released when desired.
With respect to claim 10¸ copending Application No. 18/266,129 does not explicitly claim the claimed snap-fit connection. GOGGIN et al. discloses a vaporizer (Abstract; Title) wherein the flush fit between the outer body and inner body is maintained by snap fit coupling (Paragraph [0010]). 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 two components of copending Application No. 18/266,129 with interconnecting snap fitting components, as taught by GOGGIN et al., so that the flush fit between the components can be maintained.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 3-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 15-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: With respect to claims 3 and 15, the cited art does not teach the claimed periphery rim, collar and groove, wherein the collar is positioned in the groove, per se.
These general features are known. KOVENS et al. (US 6,050,438) describe a capsule for non-destructive separation (Abstract). One housing comprises a peripherally extending collar, 22, extending within a peripherally extending rim, 24. The other housing includes a peripherally extending groove, 30 (Figures 1-5). However, the collar does is not positioned within said groove when attached, as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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