CTNF 18/290,733 CTNF 72342 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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(s) is/are: ●retaining portion claim(s) 1, 13, 16 ●heating element claim(s) 1 ●non-contact power transmission system claim(s) 2 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 07-30-02 AIA 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. 07-34-01 Claims 1-21 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 is considered to be indefinite when reciting that “air is configured to flow” (Ln18) in that the air flows according to a structural feature(s) within the aerosol provision system which is configured to allow the air to flow. However, claim 1 recites that the “air” itself is configured. Claim 1 is considered to be indefinite when reciting that “vaporized aerosolizable material from the vaporizer is configured to flow” (Lns18-19) in that the vaporized aerosolizable material flows according to a structural feature(s) within the aerosol provision system which is configured to allow the vaporized aerosolizable material to flow. However, claim 1 recites that the “vaporized aerosolizable material” itself is configured. Claim 7 is considered to be indefinite in that it is unclear what is intended by the use of “from the aerosol provision system” (Lns2-3) and the claim does not clarify which surfaces are opposed. 07-34-23 Claim 2 , the limitation “non-contact power transmission system” 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 § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-8 and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lei (CN210747239U) in view of Shinkawa (TW1694780B) . Claims 1 and 13-20 : Lei teaches an aerosol provision system 1 (pg5 para2 Lns1-2) comprising: ●a cavity 131 (pg5 para4 Lns1-2; Fig3 Fig5 Fig6) configured to receive a consumable part 20 comprising a first reservoir (Lei refers to a “cavity”; pg6 para3 Lns1-4) for containing an aerosolizable material 230 (of tobacco juice – instant claims 18-19) (pg1 para4; pg5 para 2 Lns1-5) for vaporizing (pg6 para3 Lns1-4); and comprises a first, closed, end (bottom of cavity 131; Fig5 Fig6); and comprises a second, open, end (top of cavity 131; Fig3) opposite the first end (Fig3 Fig5 Fig6), wherein the consumable part 20 is configured to at least partially project from the cavity 131 when the cavity 131 receives the consumable part 20 (pg5 para2 Lns3; pg5 para4 Lns1-2; Fig1 Fig3); ●a retaining portion (comprising at least annular (instant claim 14) magnetic bodies 14 and the inner walls of the cavity 131 inclusive of the sleeve 11), for gripping (holds the consumable 20 thereon by magnetic force using the magnetic bodies 14 – and holds the consumable part 20 by way of friction between any inside portion of the cavity 131 which contacts the consumable part 20) the consumable part 20 received in the aerosol provision system 1 (pg6 para2; pg5 para3), wherein the retaining portion at least partially extends around the cavity 131 (instant claim 13) (in that there are present two of the magnetic bodies 14 separate from each other at holes 1372 – and the inner walls of the cavity 131 inclusive of the sleeve 11) (pg5 para5 Lns1-2; Fig5 Fig6), wherein the retaining portion extend about a length direction of the cavity 131 (the length from one magnetic body 14 to the other magnetic body 14 defines a length direction of the cavity 131) (Fig5 Fig6); vertical length of the inner walls of the cavity 131 inclusive of the sleeve 11 – instant claim 15 – which extent between a first end and a second end of the consumable part 20 when the cavity 131 is receiving the consumable part 20), and wherein the retaining portion extends between the first and second ends of the cavity (i.e. the inner walls of the cavity 131 and the sleeve 11) (Fig3 Fig5 Fig6), wherein the retaining portion is configured to grip an outer surface of the consumable part 20 when the cavity 131 receives the consumable part 20 (by magnetic force gripping the bottom of the consumable part 20 and by frictional force gripping the outer walls of the consumable part 20 – both of which meet the limitations of claim 16); ●at least one air inlet 231 for delivering air into the aerosol provision system 1 (pg6 para3), ●a first channel 210 for receiving air from the at least one air inlet 231, wherein the first channel 210 is parallel to (parallel to support 13) (pg6 paras 2-3; Fig2 Fig5 Fig6), and is partially located outside of, the cavity 131 (see Figure 2 of Lei annotated below), and wherein the first channel 210 surrounds a portion of the cavity 131 (see Figure 2 of Lei annotated below); ●a vaporizer (comprising at least atomizing assembly 22) for vaporizing the aerosolizable material 230 from the first reservoir, wherein the vaporizer comprises a heating element (comprising at least the heating body and the electrode 24) (pg6 para3); ●wherein air is configured to flow in a first direction along the first channel 210, and vaporized aerosolizable material from the vaporizer is configured to flow in a second direction through the consumable part 20 in the cavity 131 (vertically down through the atomizing assembly 22) (pg6 para3), wherein the second direction is opposite to the first direction (Fig2). PNG media_image1.png 720 814 media_image1.png Greyscale PNG media_image2.png 720 735 media_image2.png Greyscale 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 the claimed retaining portion and 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 claimed retaining portion and heating element to perform the claimed functions. Lei teaches a structure for the retaining portion and heating element to perform the same claimed functions. Lei is thus considered to meet these limitations of the claim. Claims 13 and 16 : with respect to the claimed retaining portion, 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 claimed retaining portion and heating element to perform the claimed functions. Lei teaches a structure for the retaining portion to perform the same claimed function. Lei is thus considered to meet this limitation of the claims. Claims 1, 17, and 20 : Lei does not teach that the cavity 131 and the consumable part 20 (inclusive of the first reservoir) are cylindrical. However, it has been held that a claimed configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed is significant (MPEP 2144.04 (IV)(B). Also, cylindrical cavities of an aerosol provision system, for receiving a cylindrical consumable part having an aerosolizable material therein, are conventional and well known in the art as demonstrated by Shinkawa. Shinkawa teaches an aerosol provision system 1 (pg16 Ln20) having a cylindrical cavity 10 (pg6 para5; Fig1) for receiving a cylindrical consumable part 20 having an aerosolizable material therein (pg6 para6 to pg7 para6; Fig1 Fig2 Fig3 Fig4). 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 Lei that the cavity 131 and the consumable part 20 are cylindrical in that it is obvious to replace one cavity and consumable part shape (that of Lei) with another art recognized alternative cavity and consumable part shape (that of Shinkawa – cylindrical) where successful use has been demonstrated. Claims 2-3 : Lei teaches that the aerosol provision system 1 further comprises a power source 50 (comprising at least a battery) (pg5 para2 – last sentence), and a non-contact power transmission system (comprising at least air and the air switch 60) for delivering power from the power source 50 to the vaporizer (the air switch 60 is activated which then operates the power source 50 followed by operation of the vaporizer – air does not contact the power source 50) (pg5 paras2-3; pg8 para4). Claim 2 : with respect to the claimed non-contact power transmission system, 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. Lei teaches a structure for the non-contact power transmission system to perform the same claimed functions. Lei is thus considered to meet this limitation of the claim. Claims 4-5 : Lei teaches that the vaporizer comprises a tubular portion (comprising at least a pair of electrodes 24 – each being tubular in shape at electrode holes 1370) (pg5 para5; pg6 para3) which surround the cavity 131 (in that there are present two tubular portions separate from each other) (Fig4). Claims 6-8 : Lei teaches a plurality of air inlets including the first air inlet 231 (pg6 para3) and another inlet 232 allowing air to enter the curved portion of the first channel 210 (pg6 para3). Air inlets 231 and 232 are located on opposing side surfaces of from the aerosol provision system 1 in that such are on opposing sides of the outer wall of the consumable part 20. Air inlets 231 and 232 partially surround the cavity 131 (in that there are present two air inlets separate from each other (Fig2). Claim 21 : Lei teaches that the consumable part 20 is longer (in a vertical direction) than the cavity 131 due to the presence of the electrodes 24 (Fig4) and top of the consumable part 20 is above the cavity 131 (Fig1 Fig4). Also, the consumable part 20 is longer in the horizontal direction due to the presence of a push part 233 (pg6 para3; Fig1) . 07-22-aia AIA Claim s 9 and 11-12 rejected under 35 U.S.C. 103 as being unpatentable over Lei (CN210747239U) in view of Shinkawa (TW1694780B) , as applied to claim s 1-8 and 13-21 above, and further in view of Fei (US 2020/0352243 A1) and Bouchuiguir (TW 202041158 A) . Claims 9 and 11-12 : Lei does not teach a cap which is moveable between a first position in which the at least one air inlet 231 is open and a second position in which the at least one air inlet 231 is blocked wherein when in the second position the cap is configured to make an audible noise. Fei teaches a vaporizer (an aerosol provision system) having air inlets 912 and a cap 916 which is moveable between a first position in which the air inlets 912 are open and a second position in which the air inlet 912 are blocked. The cap 916 is advantageous in that one can close the vaporizer when not in use (Abstract; para49). Bouchuiguir teaches an aerosol generation device (an aerosol provision system) having an air outlet 104 comprising a cap 106 which is moveable between a first position in which the air outlet is open and a second position in which the air outlet is blocked wherein when in the second position the cap 106 is configured to make an audible noise. The audible noise paired with the cap 916 allows improved interaction of the user with the aerosol generation device. The cap 106 engages a slot at each of the first position (i.e. slot at the left edge wall of the air outlet 104 – for example, Figure 1E (first illustration)) and the second position (for example – Figure 1E (center illustration)) (pg2 para8 to pg3 para2; pg13 paras7-8; Fig1 Fig14). 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 Lei a cap which is moveable between a first position in which the at least one air inlet 231 is open and a second position in which the at least one air inlet 231 is blocked wherein when in the second position the cap is configured to make an audible noise in that Fei teaches, in the same art, that such caps (over an air inlet) allows one to close an aerosol provision system when not in use and Bouchuiguir teaches that an audible noise paired with a cap covering an air flow opening, in the same art, allows improved interaction of the user with the aerosol provision system. In Lei modified the cap engages a slot at each of the first position (see Bouchuiguir – slot at the left edge wall of the air outlet 104 – for example, Figure 1E (first illustration)) and the second position (see Bouchuiguir – Figure 1E (center illustration)) . 07-22-aia AIA Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lei (CN210747239U) in view of Shinkawa (TW1694780B), Fei (US 2020/0352243 A1), and Bouchuiguir (TW 202041158 A) , as applied to claim s 9 and 11-12 above, and further in view of Wang (US 2021/0112861 A1) or Choi (WO 2013147492 A1) . Claim 10 : Lei modified does not teach a rotatable cap. However, it is conventional and well known in the art to use rotatable caps to cover air inlets – as demonstrated by Wang. Wang teaches an electronic cigarette having a rotating cap covering an air inlet which allows one to control air intake with a single hand. The cap is illustrated in Figures 1 and 2 (para4; para57). As an alternative, Choi teaches an atomizer having a rotating cap 88 covering an air inlet which allows one to control air intake into the atomizer (Abstract; pg7 paras 5-7). 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 Lei modified a rotatable cap in that such is conventional and well known in the art, as demonstrated by Wang or Choi (in the alternative), wherein it is obvious to replace one type of cap (that of Lei) with another art recognized alternative type of cap (that of Wang or Choi) where successful use has been demonstrated. Prior Art of Record The following prior art made of record is considered pertinent to applicant’s invention. Alarcon teaches a vaporizer comprising a cap over an air inlet in the form of a plug. Beaman teaches a cap for a tube which uses slots paired with rotational movement of the cap. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LINDA L GRAY/Primary Examiner, Art Unit 1745 Application/Control Number: 18/290,733 Page 2 Art Unit: 1745 Application/Control Number: 18/290,733 Page 3 Art Unit: 1745 Application/Control Number: 18/290,733 Page 4 Art Unit: 1745 Application/Control Number: 18/290,733 Page 5 Art Unit: 1745 Application/Control Number: 18/290,733 Page 6 Art Unit: 1745 Application/Control Number: 18/290,733 Page 7 Art Unit: 1745 Application/Control Number: 18/290,733 Page 8 Art Unit: 1745 Application/Control Number: 18/290,733 Page 9 Art Unit: 1745 Application/Control Number: 18/290,733 Page 10 Art Unit: 1745 Application/Control Number: 18/290,733 Page 11 Art Unit: 1745 Application/Control Number: 18/290,733 Page 12 Art Unit: 1745
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