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 .
Election/Restrictions
Applicant’s election without traverse of the species of collapse prevention element that is one or more cylindrical elements 60, 72, allegedly encompassed by claims 1-13, and accompanying withdrawal of claims 14-20 in the reply filed on 10/06/2025 is acknowledged. Claims 1-5 and 7-13 are generic and claim 6 is specific to the elected species. Claims 14-20 are withdrawn. Claims 1-13 are examined herein.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 63/438,643, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, claim 8 lacks support. The provisional application states that “[t]ypically, the capsule has a length of between 30 mm and 150 mm” at p. 4 l. 10 and p. 12 l. 15, which does not support the lowerbound of “between 15 mm and 150 mm” recited in claim 8. Therefore, claim 8 has an effective filing date of 03/15/2023; claims 1-7 and 9-20 have an effective filing date of 01/12/2023.
Drawings
The drawings are 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: 64, shown in Fig. 11A.
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 Interpretation
Claim 1 recites an apparatus “for use with a smoking device”. The “smoking device” and components thereof are not positively recited components of the apparatus, and thus the quoted portion of the preamble is considered a mere statement of intended use which does not limit the structure of claims 1-20. See MPEP 2111.02(II); see also Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Furthermore, limitations in claims 1-20 directed to the smoking device and components thereof, such as the “two or more electrodes” of claim 9, are considered to have patentable weight only to the extent that they dictate the structure of the claimed apparatus (i.e., the capsule). See MPEP 2115; see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim 2 recites “wherein at least part of the portion of the capsule that contains the smoking material is configured to be flattened by the smoking device” and claim 11 recites “wherein at least a portion of the capsule is configured to be flattened by the smoking device prior to the one or more heating elements being heated by the smoking device” (emphasis added), with dependent claims 12-13 further specifying the capsule being configured to be flattened “to define a non-circular cross-sectional shape” and “such as to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape”, respectively. In each case, any prior art capsule which can be at least partially flattened is considered to read on the “configured to be flattened” limitations of claims 2 and 11-13, because in each case, the claimed flattening is achieved by a combination of (1) the capsule which is configured to be flattened but not further limited by specific structural elements pertaining to such flattening in claims 2 and 11-13, and (2) the structure of the smoking device, which does not form any part of the claimed apparatus.
Claim Objections
Claim 6 is objected to because it recites “a portion of the capsule that contains the smoking material” which was previously introduced in claim 1. Claim 6 should recite “[[a]]the portion of the capsule that contains the smoking material”.
Appropriate correction is required.
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 11-13 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 recites “at least a portion of the capsule is configured to be flattened” (emphasis added), but claim 1 previously introduced “a portion of the capsule that contains the smoking material”, so it is unclear whether the “portion” in claim 11 refers to the portion of claim 1 or to a second portion of the capsule.
Claims 12-13 are rejected due to their dependency on claim 11.
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, 7, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaufman (US 2017/119048 A1, provided in IDS dated 08/09/2024).
Regarding claim 1, Kaufman is directed to an article for use with an apparatus for heating smokable material (Title). The article (which reads on an “apparatus” and a “capsule” as claimed) includes the smokable material (“smoking material”) and a body 30 (“one or more heating elements”) which has a current induced therein by a coil 114 to heat the smokable material (Abstract, [0103], Fig. 4). The article includes a container 10 (“collapse-prevention element”) which is “disposed along an axis of a portion of the capsule that contains the smoking material” as claimed and as shown in Fig. 4 below. The container 10 is malleable such that it may be compressed without breaking or cracking, and thus may be re-shaped to fit closely into the apparatus (which reads on “being configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material”) [0080].
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Regarding claim 2, the container 10 may be re-shaped to fit closely into the apparatus and the container 10 is malleable to allow compression without breakage, as set forth immediately above [0080], which read on “wherein at least part of the portion of the capsule that contains the smoking material is configured to be flattened by the smoking device” and “wherein the collapse-prevention element is configured to prevent the portion of the capsule that contains the smoking material from collapsing when at least part of the portion of the capsule that contains the smoking material is flattened by the smoking device”, respectively, per claim 2.
Regarding claim 7, Kaufman further discloses an air path being formed in the container 10, either by porosity of the container 10 or by a hole punched by the user [0109]. One of ordinary skill in the art would expect such an air path to similarly be present when the container 10 is in a compressed state in order for the device to remain operational (see [0080, 0109]).
Regarding claim 11, as set forth above, the container 10 is able to be re-shaped to fit closely into the apparatus [0080], which reads on “wherein at least a portion of the capsule is configured to be flattened by the smoking device prior to the one or more heating elements being heated by the smoking device”.
Regarding claim 12, the article and/or container 10 may have a circular cross-section [0082]. The article is configured to be compressed as set forth above, which reads on “configured to be flattened to define a non-circular cross-sectional shape”.
Regarding claim 13, the article is configured to be compressed as set forth above, which reads on “wherein the capsule is configured to be flattened such as to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape” (see Claim Interpretation above; the claimed ratio is achieved in part by the claimed smoking device which forms no part of the claimed apparatus, and claim 13 recites no other capsule elements pertaining to such compression, and therefore any compressible article reads on claim 13).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (GB 2534208 A, provided in IDS dated 08/09/2024) as applied to claim 1, in view of Fuisz (US 2022/218023 A1, provided in IDS dated 04/20/2023).
Regarding claim 1, Reevell is directed to an aerosol-generating article 2 for use with an aerosol-generating device (Abstract). The article 2 (which reads on an “apparatus” and a “capsule” as claimed) includes an aerosol-forming substrate 10 (“smoking material”) (Abstract). The article 2 includes a non-compressible element (“collapse-prevention element”) which prevents a region of the article 2 from being compressed by the device (p. 11 l. 18-22). As shown below in Fig. 11, the article may include first and second non-compressible elements 52, 54 (which are “disposed along an axis of a portion of the capsule that contains the smoking material” as claimed; compare Fig. 11 with Applicant’s Figs. 15A-16B showing collapse-prevention element 60, 72) (p. 29 l. 24-31). The non-compressible elements 52, 54 ensure that the substrate 10 between them is properly compressed and heated (which reads on “the collapse-prevention element being configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material”) (p. 29 l. 33-p. 30 l. 13, Fig. 11).
Reevell fails to disclose that the article 2 comprises “one or more heating elements” as claimed. Reevell discloses a metallic foil section within the article 2, but does not specify whether such foil is used as a heating element (p. 15 l. 12-p. 16 l. 19). Reevell’s device includes a heater (Abstract, p. 21 l. 4-20).
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Fuisz is directed to a vaporizer for vaping a botanical stick with at least one individual resistive heater (“one or more heating elements”) and electrical contacts for receiving control and power from the vaporizer (Abstract). Arranging the resistive heating elements in the stick is an alternative to existing products wherein the vaporizer device contains the heating structures [0003-8]. The heating element may be a metal foil which is not toxic to humans [0122]. One of ordinary skill in the art would recognize that Reevell’s device and article are similar to the existing products discussed in Fuisz, and would further recognize that Reevell’s metallic foil could be configured to receive current and be a resistive heating element like Fuisz’s metal foil.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Reevell by configuring the device and article 2 such that the metallic foil is selected to be non-toxic and receives an electrical current from the device and thus resistively heats the aerosol-forming substrate 10 as taught by Fuisz, because both Reevell and Fuisz are directed to aerosol-generating articles and devices, Fuisz teaches that this heating arrangement is an alternative to existing devices such as Reevell’s and Fuisz further teaches using a non-toxic metal which increases user safety, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 2, the portion of the article 2 surrounding the substrate 10 is compressible (p. 4 l. 34-p. 5 l. 5) (which reads on “wherein at least part of the portion of the capsule that contains the smoking material is configured to be flattened by the smoking device”). The non-compressible elements 52, 54 read on “wherein the collapse-prevention element is configured to prevent the portion of the capsule that contains the smoking material from collapsing when at least part of the portion of the capsule that contains the smoking material is flattened by the smoking device” as set forth above in the discussion of claim 1.
Regarding claim 6, Reevell’s non-compressible elements 52, 54 may be substantially disc-shaped (“cylindrical”), are “disposed at respective ends of a portion of the capsule that contains the smoking material” as claimed (p. 11 l. 6-12, Fig. 11), and read on “the collapse-prevention elements being configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material” as set forth above in the discussion of claim 1.
Regarding claim 7, the non-compressible elements 52, 54 may include airflow channels or pores to allow air flow and avoid restricting airflow (p. 11 l. 6-12).
Regarding claim 8, the article 2 is elongate as shown in Fig. 11 and has a length of approximately 30-100 mm (p. 16 l. 29-34), which lies entirely within the claimed range.
Regarding claim 9, the recited “two or more electrodes” form no part of the claimed apparatus (see Claim Interpretation above). The article 2 of modified Reevell includes the metallic foil for resistive heating as set forth above in the discussion of claim 1.
Regarding claim 10, the non-compressible elements 52, 54 ensure proper compression of the article 10 and thus “prevent[]the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied” as set forth above in the discussion of claim 1. Thus, the elements 52, 54 read on all the limitations of claim 10. Furthermore, it would be obvious to one of ordinary skill in the art to configure the article 2, elements 52, 54, and/or metallic foil such that compression of the article 2 and/or substrate 10 does not break the electrical contact between the metallic foil and the device, because such a breakage would prevent the device from operating.
Regarding claim 11, the article 2 and substrate 10 are compressible as set forth above, which reads on claim 11 (the claim language “prior to the one or more heating elements being heated by the smoking device” does not limit the structure of the claimed capsule in any material way that distinguishes Reevell; see Claim Interpretation above). Reevell discloses a compressor within the device for compressing the substrate 10 (p. 5 l. 4-5), which further reinforces the obviousness of the claim.
Regarding claim 12, the article 2 has a circular cross-section (Fig. 1). The article 2 is configured to be compressed as set forth above, which reads on “configured to be flattened to define a non-circular cross-sectional shape”.
Regarding claim 13, the article 2 is configured to be compressed as set forth above, which reads on “wherein the capsule is configured to be flattened such as to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape” (see Claim Interpretation above; the claimed ratio is achieved in part by the claimed smoking device which forms no part of the claimed apparatus, and claim 13 recites no other capsule elements pertaining to such compression, and therefore any compressible article reads on claim 13).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Reevell (GB 2534208 A) in view of Fuisz (US 2022/218023 A1) as applied to claim 1, further in view of Worm (US 11,382,356 B2, provided in IDS dated 04/20/2023).
Reevell discloses the non-compression elements 52, 54 as set forth above. However, Reevell fails to disclose “wherein the collapse-prevention element is configured to diffuse one or more chemicals” as claimed.
Worm is directed to an aerosol delivery device with indexing movement (Title). Worm discloses supporting an interior of an aerosol source member by packing with shredded tobacco, in order to prevent the aerosol source member from collapsing due to outer pressure (col. 16 l. 3-13). Shredded tobacco is “configured to diffuse one or more chemicals” as claimed (i.e., nicotine). One of ordinary skill in the art would recognize that Worm’s packed shredded tobacco serves a similar purpose as Reevell’s non-compression elements 52, 54, and therefore the shredded tobacco could be used to replace or supplement the elements 52, 54.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Reevell by either replacing the non-compression elements 52, 54 with Worm’s packed shredded tobacco or by incorporating such packed shredded tobacco in or around the elements 52, 54, because Reevell and Worm are directed to aerosolization devices and articles, Worm teaches that this prevents the aerosol source member from collapsing due to pressure, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Reevell (GB 2534208 A) in view of Fuisz (US 2022/218023 A1) as applied to claim 1, further in view of Raichman (WO 2019/005526 A1, provided in IDS dated 04/20/2023).
Reevell discloses the non-compression elements 52, 54 as set forth above. However, Reevell fails to disclose “wherein the collapse-prevention element comprises a phase-change material that is configured to prevent the temperature of the smoking material from exceeding the phase-change temperature of the phase-change material” as claimed.
Raichman is directed to vaporizing devices and methods for delivering a compound (Title). Raichman discloses a capsule with a phase-change material (“phase-change material”) which maintains the capsule below the pyrolysis temperature of the plant material, thus ensuring that lower-temperature vaporization occurs rather than pyrolysis [0057, 0069]. The phase-change material may be shaped into a thin disc which encapsulates the plant material [0071]. One of ordinary skill in the art would recognize that Reevell’s elements 52, 54 similarly surround its substrate 10 at each end, as set forth above.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Reevell by incorporating Raichman’s phase-change material into Reevell’s non-compression elements 52, 54, because Reevell and Raichman are directed to aerosolization devices and articles, Raichman teaches that this prevents pyrolysis of the material to be vaporized, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Reevell (GB 2534208 A) in view of Fuisz (US 2022/218023 A1) as applied to claim 1, further in view of Kim (KR 101345117 B1, English translation provided herewith).
Reevell discloses the non-compression elements 52, 54 as set forth above. However, Reevell fails to disclose “wherein the collapse-prevention element is configured to absorb chemicals that are generated by pyrolysis of the smoking material” as claimed.
Kim is directed to a bio-green tobacco filter (Title, Abstract). The filter absorbs carbon monoxide (and thus is “configured to absorb chemical that are generated by pyrolysis of the smoking material”; see Applicant’s specification at p. 23, 30) (Abstract). The filter has a beneficial effect on human health and environmental hygiene (Abstract).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Reevell’s elements 52, 54 to include Kim’s filter, because Reevell and Kim are directed to tobacco articles, Kim teaches that its filter material absorbs harmful substances and is environmentally friendly, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Double Patenting
Claim 11 of this application is patentably indistinct from claim 3 of Application No. 18/303,627. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 3 of copending Application No. 18/303,627 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-2, 6, 8-9, 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 8, 12-13 of copending Application No. 18/303,636 (reference application). Although the claims at issue are not identical, at least because the overlapping claim elements are not found in single chains of dependency and instant claim 1 is broader than reference claim 4, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1 and 4 render(s) instant claim(s) 1-2 and 6 obvious;
Reference claim(s) 6 render(s) instant claim(s) 8 obvious;
Reference claim(s) 8 and 12-13 render(s) instant claim(s) 9 and 11-13 obvious.
Claims 1-2, 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-8, 11-13, 19 of copending Application No. 18/303,624 (reference application). Although the claims at issue are not identical, at least because instant claim 1 is broader than reference claim 1 and its dependents, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1-2 render(s) instant claim(s) 1-2, 6 obvious;
Reference claim(s) 5 render(s) instant claim(s) 7 obvious;
Reference claim(s) 7-8 render(s) instant claim(s) 9-10 obvious;
Reference claim(s) 11-13 render(s) instant claim(s) 11-13 obvious;
Reference claim(s) 19 render(s) instant claim(s) 8 obvious.
Claims 1-2, 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 9-12, 14-15, 19 of copending Application No. 18/303,633 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 5-6 render(s) instant claim(s) 1-2, 6 obvious;
Reference claim(s) 9 render(s) instant claim(s) 7 obvious;
Reference claim(s) 10-11 render(s) instant claim(s) 9-10 obvious;
Reference claim(s) 12, 14-15 render(s) instant claim(s) 11-13 obvious;
Reference claim(s) 19 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-9, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8 of copending Application No. 18/303,629 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 8 render(s) instant claim(s) 1-2 obvious;
Reference claim(s) 4 render(s) instant claim(s) 8 obvious;
Reference claim(s) 5, 7 render(s) instant claim(s) 11-12 obvious;
Reference claim(s) 6 render(s) instant claim(s) 9 obvious.
Claims 1-2, 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 11, 14-15 of copending Application No. 19/259,703 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 14-15 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 8 render(s) instant claim(s) 11 obvious;
Reference claim(s) 11 render(s) instant claim(s) 8 obvious.
Claims 1-2, 6, 8-9, 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8, 12, 14 of copending Application No. 18/303,627 (reference application). Although the claims at issue are not identical, at least because the overlapping claim elements are not found in single chains of dependency, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 3 render(s) instant claim(s) 1-2 obvious (additionally, instant claim 11 is rejected for statutory double patenting over reference claim 3 as set forth above);
Reference claim(s) 2 render(s) instant claim(s) 12 obvious;
Reference claim(s) 4 render(s) instant claim(s) 6 obvious;
Reference claim(s) 8 render(s) instant claim(s) 9 obvious;
Reference claim(s) 12 render(s) instant claim(s) 8 obvious;
Reference claim(s) 14 render(s) instant claim(s) 13 obvious.
Claims 1-2, 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 13-15, 22 of copending Application No. 18/307,534 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 5, 22 render(s) instant claim(s) 1, 9-10 obvious;
Reference claim(s) 13-14 render(s) instant claim(s) 2, 11-12 obvious;
Reference claim(s) 15 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13-16 of copending Application No. 18/307,524 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 4 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 13-15 render(s) instant claim(s) 11-13 obvious;
Reference claim(s) 16 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 13-16 of copending Application No. 18/308,173 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1-2 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 13-15 render(s) instant claim(s) 11-13 obvious;
Reference claim(s) 16 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-11, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 13-15 of copending Application No. 18/308,162 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 3 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 13-14 render(s) instant claim(s) 11, 13 obvious;
Reference claim(s) 15 render(s) instant claim(s) 8 obvious.
Claims 1-6, 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 9-10 of copending Application No. 18/308,170 (reference application). Although the claims at issue are not identical, at least because instant claim 1 recites the collapse-prevention element with minor differences from the reference claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 4-7 render(s) instant claim(s) 3-6 obvious;
Reference claim(s) 9 render(s) instant claim(s) 11 obvious;
Reference claim(s) 10 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 8, 16-18 of copending Application No. 18/307,516 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 8 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 2 render(s) instant claim(s) 8 obvious;
Reference claim(s) 16-18 render(s) instant claim(s) 11-13 obvious.
Claims 1-2, 8-11, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 12-14 of copending Application No. 18/312,070 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 5 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 12-13 render(s) instant claim(s) 11, 13 obvious;
Reference claim(s) 14 render(s) instant claim(s) 8 obvious.
Claims 1-2, 9-11, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 12-14 of copending Application No. 18/312,066 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 6 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 12-13 render(s) instant claim(s) 11, 13 obvious;
Reference claim(s) 14 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 12-13 of copending Application No. 18/312,061 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 3 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 12 render(s) instant claim(s) 11 obvious;
Reference claim(s) 13 render(s) instant claim(s) 8 obvious.
Claims 1-2, 8-11, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 14-16 of copending Application No. 18/312,058 (reference application). Although the claims at issue are not identical, at least because reference claim 1 has additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims render the instant claims obvious.
Reference claim(s) 1, 8 render(s) instant claim(s) 1-2, 9-10 obvious;
Reference claim(s) 14-15 render(s) instant claim(s) 11, 13 obvious;
Reference claim(s) 16 render(s) instant claim(s) 8 obvious.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8 of copending Application No. 18/303,629 in view of Worm (US 11,382,356 B2).
Reference claims 1 and 4 read on instant claim 1 as set forth above. However, the reference claims fail to disclose “wherein the collapse-prevention element is configured to diffuse one or more chemicals” as recited in claim 3.
Worm is directed to an aerosol delivery device with indexing movement (Title). Worm discloses supporting an interior of an aerosol source member by packing with shredded tobacco, in order to prevent the aerosol source member from collapsing due to outer pressure (col. 16 l. 3-13). Shredded tobacco is “configured to diffuse one or more chemicals” as claimed (i.e., nicotine). One of ordinary skill in the art would recognize that Worm’s packed shredded tobacco serves a similar purpose as the reference claims’ collapse-prevention element, and therefore the shredded tobacco could be used to replace or supplement the collapse-prevention element.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claims by either replacing the collapse-prevention element with Worm’s packed shredded tobacco or by incorporating such packed shredded tobacco in or around the collapse-prevention element, because the reference claims and Worm are directed to vaporization devices and articles, Worm teaches that this prevents the aerosol source member from collapsing due to pressure, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8 of copending Application No. 18/303,629 in view of Raichman (WO 2019/005526 A1).
Reference claims 1 and 4 read on instant claims 1 and 6 as set forth above. However, the reference claims fail to disclose “wherein the collapse-prevention element comprises a phase-change material that is configured to prevent the temperature of the smoking material from exceeding the phase-change temperature of the phase-change material” as recited in claim 4.
Raichman is directed to vaporizing devices and methods for delivering a compound (Title). Raichman discloses a capsule with a phase-change material (“phase-change material”) which maintains the capsule below the pyrolysis temperature of the plant material, thus ensuring that lower-temperature vaporization occurs rather than pyrolysis [0057, 0069]. The phase-change material may be shaped into a thin disc which encapsulates the plant material [0071]. One of ordinary skill in the art would recognize that the reference claims’ cylindrical collapse-prevention elements as recited in reference claim 4 similarly surround the smoking material at each end.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claims by incorporating Raichman’s phase-change material into the reference claims’ cylindrical collapse-prevention elements, because the reference claims and Raichman are directed to vaporization devices and articles, Raichman teaches that this prevents pyrolysis of the material to be vaporized, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8 of copending Application No. 18/303,629 in view of Kim (KR 101345117 B1).
Reference claims 1 and 4 read on instant claim 1 as set forth above. The reference claims fail to disclose “wherein the collapse-prevention element is configured to absorb chemicals that are generated by pyrolysis of the smoking material” as recited in claim 5.
Kim is directed to a bio-green tobacco filter (Title, Abstract). The filter absorbs carbon monoxide (and thus is “configured to absorb chemical that are generated by pyrolysis of the smoking material”; see Applicant’s specification at p. 23, 30) (Abstract). The filter has a beneficial effect on human health and environmental hygiene (Abstract).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claims’ collapse-prevention element to include Kim’s filter, because the reference claims and Kim are directed to tobacco articles, Kim teaches that its filter material absorbs harmful substances and is environmentally friendly, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 6-7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8 of copending Application No. 18/303,629 in view of Reevell (GB 2534208 A).
Regarding claim 6, reference claims 1 and 8 read on instant claim 1 as set forth above. The reference claims fail to disclose “wherein the capsule comprises two or more cylindrical collapse-prevention elements disposed at respective ends of a portion of the capsule that contains the smoking material, the collapse-prevention elements being configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material” as recited in claim 6.
Reevell is directed to an aerosol-generating article 2 for use with an aerosol-generating device (Abstract). The article 2 includes a non-compressible element (“collapse-prevention element”) which prevents a region of the article 2 from being compressed by the device (p. 11 l. 18-22). As shown below in Fig. 11, the article may include first and second non-compressible elements 52, 54 (p. 29 l. 24-31). The non-compressible elements 52, 54 ensure that the substrate 10 between them is properly compressed and heated (p. 29 l. 33-p. 30 l. 13, Fig. 11). The non-compressible elements 52, 54 may be substantially disc-shaped (“cylindrical”) and are “disposed at respective ends of a portion of the capsule that contains the smoking material” as claimed (p. 11 l. 6-12, Fig. 11).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claims by substituting the collapse-prevention element with Reevell’s non-compressible elements 52, 54, because the reference claims and Reevell are directed to vaporization devices and articles, Reevell teaches that this would ensure proper compression and heating, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 7, reference claims 1 and 8 read on instant claim 1 as set forth above. The reference claims fail to disclose “wherein the collapse-prevention element is configured to facilitate adequate airflow through the capsule by preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material” as recited in claim 7.
Reevell is directed to an aerosol-generating article 2 for use with an aerosol-generating device (Abstract). The article 2 includes a non-compressible element (“collapse-prevention element”) which prevents a region of the article 2 from being compressed by the device (p. 11 l. 18-22). As shown in Fig. 11, the article may include first and second non-compressible elements 52, 54 (p. 29 l. 24-31). The non-compressible elements 52, 54 ensure that the substrate 10 between them is properly compressed and heated (p. 29 l. 33-p. 30 l. 13, Fig. 11). The non-compressible elements 52, 54 may include airflow channels or pores to allow air flow and avoid restricting airflow (which reads on claim 7) (p. 11 l. 6-12).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claims by substituting the collapse-prevention element with Reevell’s non-compressible elements 52, 54, because the reference claims and Reevell are directed to vaporization devices and articles, Reevell teaches that this would ensure proper compression, heating, and air flow, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 39