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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: aperture 16.
The drawings are also objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 102, 106, 108 and 114. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1-15 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.
Claim 1 recites the limitation “the aperture” twice in the next to last line, apparently in reference to a previous recitation of “at least one aperture”. It is not clear if the aperture refers to only one aperture of the at least one apertures or each of the least one apertures.
Claim 2 recites the limitation “the adjuster aperture”, apparently in reference to a previous recitation of “the adjuster comprises at least one aperture”. It is not clear if the adjuster aperture refers to only one aperture of the at least one adjuster apertures or each of the least one adjuster apertures.
Claim 2 also recites the limitation ”the aperture” but it is not clear if the aperture refers to an air inlet portion aperture or an adjuster aperture.
Most of the remaining claims recite either “the air inlet aperture” or “the adjuster aperture” giving rise to the issues discussed above with respect to Claims 1 and 2.
Some of the claims also recite “the air inlet portion aperture.” It is not clear if ‘the air inlet aperture and the air inlet portion aperture are intended to be the same aperture or a different aperture.
Applicant is requested to clearly distinguish like apertures using the same descriptors throughout the claims to avoid indefiniteness.
All claims not specified by number also depend from and inherit the indefiniteness of Claim 1.
International Search Report
BRITISH AMERICAL TOBACCO INVESTMENTS LTD (US 10,492,526 B2) and JAPAN TOBACCO INC. (EP 1859694 A1) were cited as “X” and/or “Y” references in the International Search Report for International Application PCT/EP2022/050441, to which the instant application claims priority.
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.
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.
Claim(s) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tarora et al (US 2008/0053465).
Claim 1: Referring to Figures 1, 4, 5 and 14, Tarora et al discloses a vapor generating article comprising:
a rod-shaped main body C (such as a cigarette) having a first end (right end as depicted) and a second end (left end as depicted), the body arranged to contain a vapor generating material (Abs, [0012], [0079]-[0081]);
a filter comprising filter holder 10, filter portions 26, 28, 30, flavor generation element 32 and a first end arranged as a mouthpiece portion 40 ([0063], [0067]-[0068], [0070], [0073]) and a second end opposite the first end arranged for attachment to the first end of the main body C at socket portion 14 ([0024], [0064]), and is obviously releasable by removing from the socket 14;
a plurality of vent holes [0044] in an annular groove [0042] that form an air inlet for introducing outside air into a dilution chamber 18.([0074]-[0075]);
wherein the filter comprises an adjust ring 46 (adjuster) having a plurality of slots 48 (apertures) corresponding to the vent holes 44 of the annular groove 42. The adjust ring 46 is configured to move relative to air inlet portion to adjust the opening (cross-sectional area) of the vent holes to alter an airflow through the aperture ([0106]-[0107]);
wherein, since the cigarette C is inserted into socket portion 14, the second end of the filter is releasably attachable to the first end of the main body [0064].
Claim 2: The adjust ring has a plurality of slots 48 (apertures) corresponding to the vent holes 44 of the annular groove 42. The slots 48 extend in a circumferential direction of the adjust ring 46. By carrying out a rotating operation, the adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44 [0107]. One of ordinary skill in the art would have found that adjusting the opening of the vent holes 44 corresponds to adjusting the cross-sectional area of the inlet holes.
Claim 3: The adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, the adjuster is configured to adjust the cross-sectional area of an air inlet portion aperture to an open configuration in which ambient air is able to flow into the air inlet via the air inlet portion aperture.
Claim 3: The adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, the adjuster is configured to adjust the cross-sectional area of an air inlet aperture to a closed configuration in which ambient air is not able to flow into the air inlet portion.
Claim 5: The adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, in an open configuration, an air inlet portion aperture is obviously arranged to be substantially coaxially aligned with an adjuster aperture, such that the air inlet portion aperture and the adjuster aperture are substantially overlapping with each other.
Claim 6: The adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, in the closed configuration an air inlet portion aperture is offset from an adjuster aperture, such that the air inlet portion aperture and the adjuster aperture do not overlap with each other.
Claim 7: The adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, it would have been obvious that the adjuster is configured to adjust the cross-sectional area of an air inlet aperture to a partially open configuration in which the air inlet portion aperture is arranged partially overlap with the adjuster aperture.
Claim 8: The adjust ring 46 comprises a rotatable element that rotates in the circumferential direction of the tubular body 12 relative to the vent holes and has a plurality of slots 48 corresponding to the vent holes 44 of the annular groove 42. By carrying out a rotating operation, the adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, rotation of the rotatable element adjusts the cross-sectional area of the vent holes.
Claim 9: As discussed above, the adjust ring 46 comprises a rotatable element that rotates in the circumferential direction of the tubular body 12 relative to the vent holes and has a plurality of slots 48 corresponding to the vent holes 44 of the annular groove 42. By carrying out a rotating operation, the adjust ring 46 is capable of fully opening/closing the vent holes 44 or of adjusting the opening of the vent holes 44. An upper half of FIG. 14 shows a state in which the vent hole 44 is opened through the slot 48 of the adjust ring 46, whereas a lower half of FIG. 14 shows a state in which the vent hole 44 is closed by the adjust ring 46. [0107]. Therefore, it would have been obvious that the adjuster is arranged to receive the filter and surround the air inlet portion and further arranged to rotate relative to the filter.
Claim 10: It would have been obvious that the vent holes have a size in the circumferential direction of the filter substantially the same as the size of the slots in the adjust ring in the circumferential direction of the filter so the vent holes can be fully opened and fully closed by the slots in the adjust ring. Absent convincing evidence of unexpected results, selection of the shape of the vent holes is considered an aesthetic design feature selectable by one of ordinary skill in the art. The courts have held that a change in ornamental design having no mechanical function is an aesthetic design consideration within the skill of the art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). A change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 11: Absent convincing evidence of unexpected results, selection of the shape of vent holes is considered an aesthetic design feature selectable by one of ordinary skill in the art. The courts have held that a change in ornamental design having no mechanical function is an aesthetic design consideration within the skill of the art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). A change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 12: As depicted in figure 14, the vent holes are located in the side wall of the filter.
Claim 13: As discussed above, Tarora et al discloses a plurality of vent holes spaced around the side wall of the filter. The adjust ring comprises a plurality of slot apertures.
Claim 14: Since the adjust ring is capable of fully opening/closing the vent holes, it follows that each air inlet vent hole has a corresponding adjuster slot aperture.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tarora et al in view of Shimizu (US 2011/0290269).
The disclosure of Tarora et al is used as above. Tarora et al does not disclose a vapor generating system comprising a vapor generating article of the invention and a vapor generating device configured to receive the vapor generating article and generate a vapor from the vapor generating material.
Shimizu discloses a non-combustion smoking tool comprising a slender heater 1 having a sharp end which is directly inserted into a commercially available cigarette or cigar 100 to directly heat the leaves of the cigarette or cigar by the heater so as to vaporize nicotine contained in the tobacco leaves and enable inhalation of the vaporized nicotine (Abs.), In use, a smoker inserts its favorite filter cigarette 90 into the cigarette insertion opening 9 of the tool 100 up to where it is stopped by the stopper 4. This allows the slender heater 1 to be inserted into a tobacco portion 92 of the filter cigarette 90. Electric power is supplied through the connector 6 of the tool of the present application to raise the temperature of the heater 1 so as to directly heat the leaves of the tobacco portion 92 and vaporize nicotine ([0048]-[0049]).
It would have been obvious to one of ordinary skill in the art to employ the smoking tool of Shimizu to receive the disclosed smoking article and generate vapor from the vapor generating material in the main body (rod-shaped cigarette C). Together the article disclosed by Tarora et al used with the non-combustion smoking tool of Shimizu read on the claimed vapor generating system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS R CORDRAY/ Primary Examiner, Art Unit 1748