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 Objections
Claims 1-2, 8, 11, 14 and 17-18 are objected to because of the following informalities:
●claim 1: “generated” (Ln6) should be amended to read “produced” or “producing”
(Ln1) should be amended to read “generating”
●claim 1: “at least one” should be inserted after “said” (Ln3)
●claim 1: “configured to be” (Ln6) should be deleted
●claim 2: “sequentially” should be inserted after “to” (Ln2)
●claim 2: “sequentially” (Ln3) should be deleted
●claim 8: “is” should be inserted before “arranged” (Ln4)
●claim 11: “air” should be inserted after “second” (Ln2)
●claim 14: “MEMS” (Ln2) should be amended to read “micro-electrochemical system”
●claim 14: “one” should be inserted after “least” (Ln1)
●claim 17: “MEMS” (Ln2) should be amended to read “micro-electrochemical system”
●claim 17: “configured to be” (L3) should be deleted
●claim 18: “MEMS” (Lns1-2: both recitations) should be amended to read “micro-
electrochemical system”.
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:
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;
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
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 are as follows:
●first heating element in claims 1, 2, 3, 4, 8, and 11
●second heating element in claims 1, 2, 3, 4, 8, and 11
●control unit in claims 4 and 19
●third heating element in claim 13
●reservoir heating element in claim 20
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 § 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 4, 11, 14-16, and 19-20 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 11 is considered to be indefinite in that “said control unit” (Ln3) lacks antecedent basis. For examination purposes claim 11 is considered to comprise a pressure sensor for each of the first and second air inlet orifices wherein “said control unit is configured … pressure sensors” is not considered to be part of the claimed subject matter.
Claim 14 is considered to be indefinite in that the antecedent of “the substrate” (Ln3) is not clearly defined. Does this refer to the substrate of claim 1 (Ln4) or the substrate of claim 14 (Ln2)? Claim 15 is considered to be indefinite in that the antecedent of “the substrate” (Ln2) is not clearly defined. Does this refer to the substrate of claim 1 (Ln4) or the substrate of claim 14 (Ln2)?
Note: claims 14 and 15 -- the substrate (recited in line 3 of claim 14 and line 2 of claim 15) is considered, for examination purposes, to be the substrate of the micro-electromechanical system.
Claim 20: the claim limitation “reservoir heating element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation
under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what
structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the structure,
material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the
corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are
implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 4 and 19: the claim limitation “control unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation
under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what
structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the structure,
material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the
corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are
implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claim 5 requires one of the heating elements to have a curved air flow path which is conventionally interpreted to include at least one curve such that the path is indirect. Claim 6 requires one of the heating elements to have a meandering path which is conventionally interpreted to include at least one curve such that the path is indirect. If the first heating element is used as the heating element in claim 5 and claim 6 -- then claim 6 does not further limit claim 5. If the second heating element is used as the heating element in claim 5 and claim 6 -- then claim 6 does not further limit claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-6, 8, 12-13, and 20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Sudlow (WO 2019/162368).
Claims 1 and 13: Sudlow teaches an inhalation device (Abstract Lns1-2; for example: Figure 4 and Figure 11) comprising
●at least one liquid jet device, for producing drops of a liquid (pg21 Ln21; pg30 Ln23 to pg31
Ln17 – “Atomization Process”; Figure 4 illustrates a cavity 44 to receive a vaporizer including the liquid jet device (pg25 Lns8-29); Figure 11 illustrates a vaporizing arrangement 178 including the liquid jet device (pg26 Lns5-35)) on demand (pg1 L32 to pg2 Ln3), comprising
●a fluid chamber (see a portion of Fig17 annotated below -- for example)
●an ejection nozzle (pg30 Ln28)
●a supply channel embedded in a substrate (see a portion of Fig17 annotated
below -- for example)
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●an air conduit comprising at least
●a conduit (pg26 Lns26-28: “The vapourising arrangement 178 further comprises a
conduit (not shown) … to deliver …”; pg22 Ln27 to pg27 Ln7 (also pg28 Lns18-31): air is drawn through a mouthpiece of the inhalation device (by way of air inlets orifices near an electrical portion of the inhalation device (Figure 11 illustrates an electrical battery portion 166 -- page 26, line32-35) and other areas) and is entrained with vaporized e-liquid and heated)
●a first heating element and a second heating element (and third) (i.e. in that two
different heating areas of a single heating element may be considered as a first heating element and a second heating (and a third); see heating element of Fig1: pg22 Lns22-26; see heating element 312 in Fig27 having horizontal and vertical areas: pg34 Ln26 to pg35 Ln11; see Fig2 and heating element 20: pg22 Lns27-31) (see a portion of Fig27 annotated below -- for example)
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396
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●a mixing chamber 180/170 (pg26 Lns17-28; Fig11) and 42 (pg25 Lns8-14; Fig4) in which air from
the air conduit is mixed with the generated liquid drops (pg26 Lns17-20).
The first and second heating elements are arranged to pre-heat the air guided by the air conduit from its respective air inlet orifice (pg21 Ln21; pg30 Ln23 to pg31 Ln17 – “Atomization Process”; Figure 4 illustrates a cavity 44 to receive a vaporizer including the liquid jet device (pg25 Lns8-29); Figure 11 illustrates a vaporizing arrangement 178 including the liquid jet device (pg26 Lns5-35)) (for the air inlet orifices: pg22 Ln27 to pg27 Ln7 (also pg28 Lns18-31): air is drawn through the mouthpiece of the inhalation device (by way of air inlets orifices near an electrical portion of the inhalation device).
Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 1: with respect to claimed first heating element and second heating element, 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. The instant specification teaches a structure for the first heating element and the second heating element to perform the claimed function. Sudlow teaches a structure for the first heating element and the second heating element to perform the same claimed function. Sudlow is thus considered to meet these limitations of the claim.
Claim 13: with respect to claimed third heating element, 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. The instant specification teaches a structure for the third heating element to perform the claimed function. Sudlow teaches a structure for the third heating element to perform the same claimed function. Sudlow is thus considered to meet this limitation of the claim.
Claim 2: the first and second heating elements are arranged in series in that the two different heating areas are at different points of the heating elements -- thus, the first and second heating elements sequentially pre-heat the air guided by the air conduit (see a portion of Fig27 annotated above
-- for example).
With respect to claimed first heating element and second heating element, 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. The instant specification teaches a structure for the first heating element and the second heating element to perform the claimed function. Sudlow teaches a structure for the first heating element and the second heating element to perform the same claimed function. Sudlow is thus considered to meet these limitations of the claim.
Claims 5-6: claim 5 requires one of the heating elements to have a curved air flow path which is conventionally interpreted to include at least one curve such that the path is indirect. Claim 6 requires one of the heating elements to have a meandering path which is conventionally interpreted to include at least one curve such that the path is indirect. Sudlow teaches a curved air flow path 46 (pg5 Lns8-14; Fig4).
Claim 8: the air conduit comprises at leastfor the at least first and second air inlet orifices: pg22 Ln27 to pg27 Ln7 (also pg28 Lns18-31): air is drawn through the mouthpiece of the inhalation device (by way of air inlets orifices near an electrical portion of the inhalation device)) and for each of the air inlet orifices at least one of the heating elements is arranged to pre-heat the air guided by the air conduit from its respective air inlet orifice into the mixing chamber (pg26 Lns26-28: “The vapourising arrangement 178 further comprises a conduit (not shown) … to deliver …”; pg22 Ln27 to pg27 Ln7 (also pg28 Lns18-31): air is drawn through a mouthpiece of the inhalation device (by way of air inlets orifices near an electrical portion of the inhalation device) and is entrained with vaporized e-liquid and heated).
With respect to claimed first heating element and second heating element, 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. The instant specification teaches a structure for the first heating element and the second heating element to perform the claimed function. Sudlow teaches a structure for the first heating element and the second heating element to perform the same claimed function. Sudlow is thus considered to meet these limitations of the claim.
Claim 12: the liquid jet device is in the form of a micro-electromechanical system 60 (piezo-electric crystal connected to a power supply and comprise a vibrating membrane (pg25 Lns8-25).
Claim 20: Sudlow teaches a reservoir 176 configured to store an amount of the liquid (pg26 Lns17-20). The heating element(s) is configured to heat the liquid in the reservoir, to a predetermined temperature, in that the liquid in the reservoir 176 exits the reservoir 176 and enters a chamber for heating by the heating element(s) (pg26 Lns17-25).
With respect to claimed reservoir heating element, 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. Sudlow teaches a structure for the heating element to perform the same claimed function. Sudlow is thus considered to meet this limitation of the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sudlow.
Claims 3-4: Sudlow teaches a control unit (Sudlow: control circuitry) to control the heating elements (pg26 Lns29-35).
Claims 3-4: with respect to the claim limitation of providing and controlling the heating elements (i.e. the heating areas) individually to have different nominal heating power, this claimed feature -- to which one skilled in the art would consider -- is a function of, among other variables: the vaporizable liquid used, the dimensions of the heating areas, the volume of conduit, the desired temperature profile of the vaporized liquid at the mouthpiece, and pressures within the inhalation device. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the providing and controlling the heating elements (i.e. the heating areas) individually to have different nominal heating power -- to which one skilled in the art would consider -- based on known variables, such as those listed for example; and thus, such cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 3 and 4: with respect to claimed first heating element and second heating element, 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. The instant specification teaches a structure for the first heating element and the second heating element to perform the claimed function. Sudlow teaches a structure for the first heating element and the second heating element to perform the same claimed function. Sudlow is thus considered to meet these limitations of the claim.
Claim 4: with respect to claimed control unit, 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. Sudlow teaches a structure for the control unit to perform the same claimed function. Sudlow is thus considered to meet this limitation of the claim.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sudlow, as applied to claims 1-2, 5-6, 8, 12-13, and 20 above, and further in view of Barbaric (US 2020/0113246 A1).
Claim 7: Sudlow teaches an outer housing for the inhalation device where the heating element(s) is housed therein. Figures 7 to 11 (and Figure 27) illustrate the outer housing. Sudlow does not teach the material making up the outer housing -- that the outer housing is ceramic
However, a ceramic outer housing of an inhalation device is conventional and well-known in the art. This is taught by Barbaric. Barbaric teaches an electronic vapor delivery system (¶2) having heating elements 120 (¶54) wherein there is provided a ceramic outer housing 242 with the heating element 120 housed therein (¶115).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Sudlow that the outer housing is of a ceramic material in that a ceramic outer housing of an inhalation device is conventional and well-known in the art -- as demonstrated by Barbaric -- wherein it is obvious to replace one material of an outer housing of an inhalation device (that of Sudlow – not disclosed) with another art recognized alternative outer housing material (that of Barbaric -- ceramic) where a successful outcome can be predicted (i.e. the inhalation functions properly with a ceramic outer housing).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sudlow, as applied to claims 1-2, 5-6, 8, 12-13, and 20 above, and further in view of Buchberger (ES 2727759 T3).
Claims 9 and 10: Sudlow does not teach that the air inlet orifices (near the power portion of the inhalation device) are configured and arranged symmetrically relative to an axis in the inhalation device and does not teach that the air inlet orifices are arranged on opposing sides of the inhalation device.
Buchberger teaches an aerosol delivery device (pg1, last 2 lines). The device comprises air inlet orifices 5 (pg8 ¶2; pg9 Lns5-7). Figure 5 illustrates that the air inlet orifices 5 are configured and arranged symmetrically relative to the vertical axis in the aerosol delivery device and arranged on opposing sides of the device – at the power portion (pg6 Lns24-30).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Sudlow that the air inlet orifices are configured and arranged symmetrically relative to the vertical axis of the inhalation device and that the air inlet orifices are arranged on opposing sides of the inhalation device in that Buchberger teaches, in that same art as Sudlow, that such locations and positions are conventional and well-known in the art where it is obvious to replace one air-inlet-orifice setup (that of Sudlow -- at the electrical area of the inhalation device) with another art recognized alternative air-inlet-orifice setup (that of Buchberger) where a successful outcome can be predicted (i.e. proper air introduction into the inhalation device).
Also, it has been held that a particular placement of a structure (in the instant application -- the air inlet orifices) of a device is an obvious matter of design choice if such does change operation of the device (in the instant application -- the inhalation device) (MPEP 2144.04 (VI)(c ).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sudlow, as applied to claims 1-2, 5-6, 8, 12-13, and 20 above, and further in view of Rostami (US 2017/0258132 A1).
Claim 11: Sudlow does not teach a pressure sensor for the air inlet orifices.
Rostami teaches a vaping device (Abstract) having a pressure sensor 13 and air inlet orifices 44a. The sensor 13 senses air through the orifices 44a. In response, the power supply 12 is activated and the heater activation light 48 is turned on (¶s88-89).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Sudlow a pressure sensor for the air inlet orifices (and a heater activation light) as part of the inhalation device in that Rostami teaches that such turning on a heater activation light (with the pressure sensor and the air inlet orifices together) allows a user to determine when the device is working or not working.
With respect to claimed first heating element and second heating element, 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. The instant specification teaches a structure for the first heating element and the second heating element to perform the claimed function. Sudlow teaches a structure for the first heating element and the second heating element to perform the same claimed function. Sudlow is thus considered to meet these limitations of the claim.
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 1-6, 8, and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/288,710 in view of Sudlow which teaches the air inlet orifice limitation of claims 1 and 8. See the discussion of Sudlow above for claims 1 and 8. See discussions of Sudlow above with respect to claims 3-4 and claims 5-6.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/288,710 in view of Sudlow, as applied to claims 1-6, 8, and 12-20 above, and further in view of Barbaric which teaches the ceramic housing. See discussion of Barbaric above.
Claims 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/288,710 in view of Sudlow, as applied to claims 1-6, 8, and 12-20 above, and further in view of Buchberger which teaches the air inlet orifice limitations. See discussion of Buchberger above for claims 9-10.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/288,710 in view of Sudlow, as applied to claims 1-6, 8, and 12-20 above, and further in view of Rostami which teaches the pressure sensor limitation. See discussion of Rostami above.
This is a provisional nonstatutory double patenting rejection.
Prior Art of Record
The following prior art has been made of record: Voges teaches a substance dispenser having a droplet ejection device 14. Katase teaches an electronic cigarette having a jet dispenser.
Conclusion
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/LINDA L GRAY/Primary Examiner, Art Unit 1745