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 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 1-17 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 1 contains the phrase: “an inhalation device with at least one liquid jet device”. It’s not clear if liquid jet device is part of the claimed inhalation device. For purpose of examination, the Examiner will assume the Applicant meant to recite “an inhalation device comprising at least one liquid jet device”.
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 –
Claim(s) 1-3, 9 and 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sudlow et al. (WO 2019162368).
Regarding claim 1, Sudlow discloses an inhalation device (11, fig. 4) with at least one liquid jet device for producing drops of a liquid on demand (page 21, line 16), said liquid jet device comprising:
a fluid chamber, an ejection nozzle and a supply channel embedded in a substrate, the inhalation device further comprising at least one heating element arranged to pre-heat said liquid to a predetermined temperature prior to ejection through said ejection nozzle (page 26).
Regarding claim 2, Sudlow discloses the liquid jet device is in the form of piezo-electric element (by reference sign 60, fig. 4) (corresponding to the claimed a micro-electromechanical system “MEMS”).
Regarding claim 3, Sudlow discloses the heating element is a resistor embedded in a substrate of said (piezo-electric element “MEMS”) so as to pre-heat to the predetermined temperature at least a part of the liquid present in cavities formed in the substrate (page 26).
Regarding claim 9, Sudlow discloses an air conduit and a mouthpiece chamber in which air from said air conduit is mixed with the generated liquid drops (fig. 7).
Regarding claim 11, Sudlow discloses a reservoir configured to store an amount of said liquid and a reservoir heating element arranged to heat the liquid in said reservoir to a predetermined liquid reservoir temperature (page 26).
Regarding claim 12, Sudlow discloses the inhalation device a comprising at least one further second liquid jet device for producing drops of a liquid on demand, said further at least one second liquid jet device comprising a fluid chamber, an ejection nozzle and a supply channel embedded in a further substrate (see figs. 8-10).
Regarding 13, Sudlow discloses a second heating element arranged to pre-heat a liquid to a further predetermined temperature prior to ejection through the ejection nozzle in the further substrate (see figs. 8-10).
Regarding claim 14, Sudlow discloses at least one second liquid jet device are provided configured for producing drops from respective different liquids (see figs. 8-10).
Regarding claim 15, Sudlow discloses at least one second liquid jet device are provided configured for producing drops from the same liquid (102, 104, fig. 8).
Regarding claim 16, Sudlow discloses the at least one second liquid jet device are in the form of a micro-electromechanical system are formed in the same substrate (102, 104, fig. 8).
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(s) 4-5, 7-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sudlow et al. (WO 2019162368) in view of Wu (U.S Pub. No. 20200049568).
Regarding claim 4, Sudlow does not expressly discloses a temperature sense resistor. Wu discloses a resistance temperature detector (“RTD”) (corresponding to the claimed temperature sense resistor “TSR”) operating in a dual role as a temperature sensor and a heat source [0025]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the TSR taught by Wu in the device of Sudlow for its dual role property.
Regarding claim 5, the combination of Sudlow and Wu discloses the resistor is a heating resistor arranged in a vicinity of said fluid chamber and configured to heat an amount of the liquid in said fluid chamber to at least a vaporization temperature, so that a vapour bubble expels a drop of the liquid through the ejection nozzle (page 30 and figs. 13-16 of Sudlow).
Regarding claim 6, Sudlow discloses a control unit configured to drive said resistor so that said amount of the liquid in the firing chamber is pre-heated to said predetermined temperature prior to heating said amount of the liquid to at least the vaporization temperature (page 26, lines 29 – page 27, line 7).
Regarding claim 10, Sudlow discloses the surface tension of the fluid is dependent on the temperature and the air temperature effects the size of aerosol (page 24 and pages 30-31). (original) The inhalation device according to claim 9, wherein the air conduit comprises a further heating element arranged to pre-heat the air guided by the air conduit into the mixing chamber.
Regarding claims 7-8, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply lower voltage in a pre-heating stage than that of the vaporization stage; therefore the control unit is configured to apply a voltage pulse with variable width to said resistor, and wherein a pre-heating pulse is shorter than a vaporization pulse; wherein said pre-heating pulse is approximately half as long as said vaporization pulse.
Regarding claim 17, Sudlow discloses a liquid jet device, a circuit board and a mixing chamber (figs. 7 and 11) wherein the at least one liquid jet device produce drops into said mixing chamber. It would have been obvious to one of ordinary skill in the art at the time the invention was made to rearrangement of parts to arrive to the at least one liquid jet device is mounted on a printed circuit board, inlet air is guided through an opening of said printed circuit board, and a mixing chamber is arranged atop the printed circuit board so that the at least one liquid jet device produce drops into said mixing chamber. See In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
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 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18288661 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they have the same scope of invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/PHU H NGUYEN/ Examiner, Art Unit 1747