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 (encompassing claim 4), and accompanying withdrawal of claim 3, in the reply filed on 10/06/2025 is acknowledged. Claims 1-2 and 5-19 are generic. Claim 3 is withdrawn. Claims 1-2 and 4-19 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 6 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 6. Therefore, claim 6 has an effective filing date of 03/15/2023; claims 1-5 and 7-20 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 “coil” of claims 10-11 and the “two or more electrodes” of claim 13, 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 8 recites “wherein at least a portion of the capsule is configured to be flattened by the smoking device such as to define the cross-sectional shape having a ratio of more than 2:1…”. Claims 9-13 depend from claim 8, claim 11 similarly recites “wherein the portion of the capsule is configured to be flattened while the portion of the capsule is disposed within a coil”, and claim 13 similarly recites “wherein the capsule is configured to be flattened by the two or more electrodes”. In each case, any prior art capsule which can be at least partially flattened is considered to read on the flattened limitations of claims 8-13, 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 8-13, and (2) the structure of the smoking device (e.g., the coil, the electrodes, etc.), which does not form any part of the claimed apparatus.
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, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Batista (US 2021/0289841 A1, provided in IDS dated 08/09/2024).
Regarding claim 1, Batista is directed to an article which is insertable into a device for generating an aerosol (Abstract). The article is elongate as shown in Figs. 5-15 (the article reads on an “apparatus comprising: an elongate capsule” as claimed). The article includes an aerosol-forming substrate (“smoking material”) and one or more susceptors (“one or more heating elements”) for generating the aerosol within a heating chamber of the device (Abstract, [0025]). In some embodiments, the article has a substantially flat surface or surfaces, wherein a ratio of the article’s width and/or length to thickness is at least 2:1 (which reads on the claimed “ratio of more than 2:1”) [0049].
Regarding claim 2, Batista discloses that the article may “have” the flat surface(s) and width/length/thickness discussed above [0049], which one of ordinary skill in the art would understand to mean that Batista’s article is “manufactured” (per claim 2) with such physical properties (as opposed to being physically manipulated after manufacture).
Regarding claim 5, the article includes a susceptor (“magnetically-heated materials that are susceptible to being heated by a magnetic field”) as set forth above [0025].
Regarding claim 6, the article may have a length of approximately 45 mm [0047], which lies within the claimed range and therefore anticipates it.
Regarding claims 14-16, as set forth above, a ratio of the article’s width and/or length to thickness is at least 2:1 [0049]. The ratio may be at least 7:1, which anticipates claims 14-16 (“more than 3:1” per claim 14, “more than 4:1” per claim 15, and “more than 6:1” per claim 16).
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 4 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2021/0289841 A1) as applied to claim 1, in view of Reevell (GB 2534208 A, provided in IDS dated 08/09/2024).
Regarding claim 4, Batista discloses the article as set forth above, but fails to disclose “two or more cylindrical collapse-prevention elements” as claimed.
Reevell is directed to an aerosol-generating article (Title). The article may have a non-compressible element (“collapse-prevention element”) which may be substantially disc-shaped and have a length of 2-10 mm (which reads on a “cylindrical” collapse-prevention element) (p. 10 l. 31-33, p. 11 l. 8-9, p. 17 l. 27-29, see Applicant’s Figs. 15-16 showing cylindrical collapse-prevention element 72). Two non-compressible elements (“two or more”) may be provided on either end of an aerosol-forming substrate (p. 11 l. 30-p. 12 l. 8, p. 29 l. 24-31, Fig. 11). The non-compressible elements prevent a region of the article from being compressed, ensuring that compression occurs only where desired (p. 11 l. 18-22). A different region of the article is compressed in order to increase heating efficiency of the substrate (p. 4 l. 34-p. 5 l. 5).
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 Batista’s article to include Reevell’s two non-compressible elements at either end of Batista’s aerosol-forming substrate, because both Batista and Reevell are directed to aerosol-generating articles, Reevell teaches that this ensures that compression occurs only where desired, 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).
Regarding claim 8, Batista discloses the article as set forth above in the discussion of claim 1, which is provided with a ratio of at least 2:1 regarding width and/or length to thickness. In some embodiments, Batista’s article has a substantially cylindrical shape [0045] (“wherein the elongate capsule is manufactured such as to define a cylindrical shape”). However, Batista fails to disclose “wherein at least a portion of the capsule is configured to be flattened by the smoking device such as to define the 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, prior to the one or more heating elements being heated by the smoking device”.
Reevell is directed to an aerosol-generating article (Title). The article and a substrate therein may be compressible to increase heating efficiency (p. 4 l. 34-p. 5 l. 5). The article may be compressed such that its smallest outer diameter is reduced between approximately 20-50% (p. 18 l. 19-25) (which renders obvious the “cross-sectional shape having a ratio of more than 2:1”, particularly in view of Batista’s ratio of width and/or length to thickness).
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 Batista’s substantially cylindrical article so that it is compressible to provide a ratio of width and/or length to thickness of at least 2:1, because both Batista and Reevell are directed to aerosol-generating articles, Reevell teaches that such compressibility increases heating efficiency, Batista teaches a similarly-shaped cross-section, 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 9, Batista’s article includes a susceptor (“magnetically-heated materials that are susceptible to being heated by a magnetic field”) as set forth above [0025].
Regarding claim 10, modified Batista’s article is compressible to a non-circular cross-section as set forth above in the discussion of claim 8. Thus, the article is “configured to be inserted into a coil that has a non-circular cross-sectional shape” as claimed. The recited “coil” forms no part of the claimed apparatus (see Claim Interpretation above).
Regarding claim 11, modified Batista’s article is compressible to a non-circular cross-section as set forth above in the discussion of claim 8. Thus, the article is “configured to be flattened while the portion of the capsule is disposed within a coil” as claimed. The recited “coil” forms no part of the claimed apparatus (see Claim Interpretation above).
Regarding claim 12, modified Batista as applied to claim 8 fails to disclose a “metallic foil” as claimed.
Reevell discloses an outer wrapper with a metallic foil section, which can deform under compression and retain its deformed shape afterward (p. 15 l. 12, p. 16 l. 10-16). Reevell’s metallic foil is “configured to be heated via resistive heating” as claimed because metal foils in general are conductive to electricity and produce heat due to electrical resistance.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Batista’s article to include Reevell’s metallic foil, because both Batista and Reevell are directed to aerosol-generating articles, Reevell teaches that the metallic foil retains its compressed shape, 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).
Regarding claim 13, modified Batista’s article, as set forth above in the discussion of claim 12, is “configured to be flattened by the two or more electrodes” because the article is compressible under mechanical pressure, regardless of what is applying such pressure (see Claim Interpretation above, explaining that limitations directed to device components have patentable weight only to the extent that they dictate the structure of the claimed apparatus). The claim element “wherein the smoking device includes two or more electrodes that are configured to drive an electrical current through the metallic foil” has zero patentable weight because it places no limitation on the claimed apparatus (see Claim Interpretation above).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2021/0289841 A1) as applied to claim 6.
Regarding claim 7, Batista’s article may have a length of approximately 30-100 mm, or may have a length of approximately 70-210 mm [0047], both of which overlap the claimed range and therefore render it obvious.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2021/0289841 A1) as applied to claim 1, in view of England (WO 2019/101623 A1, provided in IDS dated 08/09/2024).
Batista discloses the article as set forth above, but fails to disclose a “metallic foil” per claim 17 with thickness as recited in claims 18-19.
England is directed to a smoking article with a multi-layer laminate structure (Title, Abstract). The intermediate layer may be a metal foil, which is a non-combustible material that can nevertheless act to conduct heat to the aerosolisable material in use (p. 5 l. 26-p. 6 l. 6). England’s metal foil is “configured to be heated via resistive heating” per claim 17 because metal foils in general are conductive to electricity and produce heat due to electrical resistance. England’s metal foil may be less than about 8 microns thick and more than about 5 microns thick (p. 6 l. 8-10), which lies entirely within the ranges of claims 18-19.
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 Batista’s article to include England’s metal foil with thickness of about 5-8 microns, because both Batista and England are directed to aerosol-generating articles, England teaches that the metal foil is non-combustible and conducts heat, 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).
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 1-2, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-13, 15, 18, and 22 of copending Application No. 18/211,849 (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 claims 1 and 12 or alternatively 1, 13, and 15 render instant claims 1 and 17 obvious (wherein the reference “absorbent material” reads on the instant “smoking material”);
Reference claim 12 renders instant claim 2 obvious;
Reference claims 13-15 render instant claims 8 and 12-13 obvious;
Reference claim 18 renders instant claims 18-19 obvious;
Reference claim 22 renders instant claims 6-7 obvious.
Claims 1 and 4-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-17 of copending Application No. 18/303,627 (reference application). Although the claims at issue are not identical, at least because instant claims 1 and 8 are broader than reference claims 1 and 14, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1 and 14 read on instant claim 1;
Reference claims 2 and 14 read on instant claim 8;
Reference claim 4 reads on instant claim 4;
Reference claim 5 reads on instant claims 5 and 9;
Reference claim 6 reads on instant claim 10;
Reference claim 7 reads on instant claim 11;
Reference claim 8 reads on instant claims 12 and 17;
Reference claim 9 reads on instant claim 13;
Reference claims 10-11 read on instant claims 18-19;
Reference claims 12-13 read on instant claims 6-7;
Reference claims 15-17 read on instant claims 14-16.
Claims 1, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, and 19-20 of copending Application No. 18/312,070 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 12-13 read on instant claims 1, 8, 12-13, 17;
Reference claims 14-15 read on instant claims 6-7;
Reference claims 19-20 read on instant claims 18-19.
Claims 1, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, and 19-20 of copending Application No. 18/312,066 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 12-13 read on instant claims 1, 8, 12-13, 17;
Reference claims 14-15 read on instant claims 6-7;
Reference claims 19-20 read on instant claims 18-19.
Claims 1, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-13, and 15-18 of copending Application No. 18/312,063 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 16-17 read on instant claims 1, 17;
Reference claims 12-13 (which suggest a cylindrical capsule shape) read on instant claims 8, 12-13;
Reference claim 15 reads on instant claims 18-19;
Reference claim 18 reads on instant claims 6-7.
Claims 1, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-12, 14-16, 19-20 of copending Application No. 18/312,058 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 14-15 read on instant claims 1, 17;
Reference claims 11-12 (which suggest a cylindrical capsule shape) read on instant claims 8, 12-13;
Reference claim 16 reads on instant claims 18-19;
Reference claims 19-20 reads on instant claims 6-7.
Claims 1, 4-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, and 9-20 of copending Application No. 18/303,624 (reference application). Although the claims at issue are not identical, at least because the claim elements do not overlap in single chains of dependency, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 11, 13 read on instant claims 1, 4;
Reference claim 6 read on instant claim 5;
Reference claim 7, 9-10 read on instant claim 17-19;
Reference claim 12, 17-18 read on instant claim 8, 12-13;
Reference claim 14-16 read on instant claim 9-11;
Reference claims 19-20 read on instant claims 6-7.
Claims 1, 4, 6-8, 12-13, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9, 11-13 of copending Application No. 18/303,623 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 11, 13 read on instant claim 1;
Reference claim 6 read on instant claim 4;
Reference claim 8 read on instant claims 6-7;
Reference claim 9, 12 read on instant claims 8, 12-13, 17.
Claims 1-2, 4-10, 12-13, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10, 12, 14-20 of copending Application No. 18/303,633 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 5, 12, 15 or alternatively claims 1, 4 read on instant claim 1;
Reference claim 2 read on instant claim 17;
Reference claim 3 read on instant claim 5;
Reference claim 4 read on instant claim 2;
Reference claim 6 read on instant claim 4;
Reference claim 10, 14, 17-18 read on instant claim 8, 12-13;
Reference claims 14, 16 read on instant claims 8-10;
Reference claims 19-20 read on instant claims 6-7.
Claims 1-2, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13-15, 19-20 of copending Application No. 18/307,534 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 11 read on instant claims 1-2, 17;
Reference claims 13-14 read on instant claim 8, 12-13;
Reference claim 15 reads on instant claims 6-7;
Reference claims 19-20 read on instant claims 18-19.
Claims 1-2, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-16 of copending Application No. 18/307,524 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claims 1, 13, 15 or alternatively claims 1, 11 read on instant claims 1, 17;
Reference claim 11 reads on instant claim 2;
Reference claim 12 reads on instant claims 18-19;
Reference claim 14 reads on instant claim 8, 12-13;
Reference claim 16 reads on instant claims 6-7.
Claims 1-2, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12-17 of copending Application No. 18/308,173 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claim 1, 13, 15 read on instant claim 1, 17;
Reference claim 10 reads on instant claim 2;
Reference claim 12 reads on instant claims 18-19;
Reference claim 14 reads on instant claim 8, 12-13;
Reference claim 16-17 read on instant claims 6-7.
Claims 1, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 12-15 of copending Application No. 18/308,162 (reference application). Although the claims at issue are not identical, at least because reference claim 1 includes additional elements not found in the instant claims, they are not patentably distinct from each other because the reference claims anticipate the instant claims or render them obvious.
Reference claim 1, 13-14 read on instant claim 1, 17;
Reference claims 8-9 (which suggest a cylindrical capsule shape) read on instant claims 8, 12-13;
Reference claim 12 reads on instant claims 18-19;
Reference claim 15 reads on instant claims 6-7.
Claims 1-2, 6-8, 12-13, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 15-20 of copending Application No. 18/307,516 (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 anticipate the instant claims or render them obvious.
Reference claims 1, 15 or alternatively claims 1, 16, 18 read on instant claim 1-2, 6, 17;
Reference claim 2 reads on instant claim 7;
Reference claim 16-17 read on instant claim 8, 12-13;
Reference claims 19-20 read on instant claims 18-19.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 5-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, and 11-13 of copending Application No. 18/312,061 in view of Batista (US 2021/0289841 A1).
Reference claims 1 and 12 read on instant claims 1 and 17 except for the “ratio of more than 2:1” of instant claim 1. Reference claim 12 recites the portion of the capsule being configured to be flattened, but does not specify the instantly claimed ratio.
Batista is directed to an article which is insertable into a device for generating an aerosol (Abstract). In some embodiments, the article has a substantially flat surface or surfaces, wherein a ratio of the article’s width and/or length to thickness is at least 2:1 (which reads on the claimed “ratio of more than 2:1”) [0049].
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 providing an article with a ratio of width and/or length to thickness of at least 2:1 as taught by Batista, because both the reference claims and Batista are directed to aerosol-generating articles, 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, Batista discloses that the article may “have” the flat surface(s) and width/length/thickness discussed above [0049], which one of ordinary skill in the art would understand to mean that Batista’s article is “manufactured” (per claim 2) with such physical properties (as opposed to being physically manipulated after manufacture).
It would be similarly obvious to modify the reference claims to provide a manufactured article having the claimed ratio, as taught by Batista, for the same reasons as set forth above.
Regarding claim 5, Batista’s article includes a susceptor (“magnetically-heated materials that are susceptible to being heated by a magnetic field”) [0025].
It would be similarly obvious to modify the reference claims to provide a susceptor within the article, as taught by Batista, for the same reasons as set forth above, and furthermore to allow inductive heating of the article.
Regarding claim 8, reference claims 8 and 9 suggest a cylindrical article shape and therefore reads on claim 8.
Regarding claim 9, Batista’s article includes a susceptor (“magnetically-heated materials that are susceptible to being heated by a magnetic field”) as set forth above [0025].
Regarding claim 10, the reference claims recite the article being configured to be flattened. Thus, the article is “configured to be inserted into a coil that has a non-circular cross-sectional shape” as claimed. The recited “coil” forms no part of the claimed apparatus (see Claim Interpretation above).
Regarding claim 11, the reference claims recite the article being configured to be flattened. Thus, the article is “configured to be flattened while the portion of the capsule is disposed within a coil” as claimed. The recited “coil” forms no part of the claimed apparatus (see Claim Interpretation above).
Regarding claims 14-16, Batista discloses a ratio of the article’s width and/or length to thickness is at least 2:1 [0049], as set forth above. The ratio may be at least 7:1, which renders obvious claims 14-16 (“more than 3:1” per claim 14, “more than 4:1” per claim 15, and “more than 6:1” per claim 16).
Reference claims 8, 9 (which suggest a cylindrical article shape) read on instant claims 8, 12-13;
Reference claim 11 reads on instant claims 18-19.
Reference claim 13 reads on instant claims 6-7.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, and 11-13 of copending Application No. 18/312,061 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A).
Regarding claim 4, the reference claims and Batista read on claim 1 as set forth above. However, the reference claims and Batista fail to disclose “two or more cylindrical collapse-prevention elements” per claim 4.
Reevell is directed to an aerosol-generating article (Title). The article may have a non-compressible element (“collapse-prevention element”) which may be substantially disc-shaped and have a length of 2-10 mm (which reads on a “cylindrical” collapse-prevention element) (p. 10 l. 31-33, p. 11 l. 8-9, p. 17 l. 27-29, see Applicant’s Figs. 15-16 showing cylindrical collapse-prevention element 72). Two non-compressible elements (“two or more”) may be provided on either end of an aerosol-forming substrate (p. 11 l. 30-p. 12 l. 8, p. 29 l. 24-31, Fig. 11). The non-compressible elements prevent a region of the article from being compressed, ensuring that compression occurs only where desired (p. 11 l. 18-22). A different region of the article is compressed in order to increase heating efficiency of the substrate (p. 4 l. 34-p. 5 l. 5).
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 article to include Reevell’s two non-compressible elements at either end of the reference smoking material, because both the reference claims and Reevell are directed to aerosol-generating articles, Reevell teaches that this ensures that compression occurs only where desired, 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).
Claims 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9, 11-13 of copending Application No. 18/303,623 in view of England (WO 2019/101623 A1).
Reference claims 1 and 12 read on instant claim 17 as set forth above. However, the reference claims fail to disclose the metallic foil thickness of claims 18-19.
England is directed to a smoking article with a multi-layer laminate structure (Title, Abstract). The intermediate layer may be a metal foil, which is a non-combustible material that can nevertheless act to conduct heat to the aerosolisable material in use (p. 5 l. 26-p. 6 l. 6). England’s metal foil is “configured to be heated via resistive heating” per claim 17 because metal foils in general are conductive to electricity and produce heat due to electrical resistance. England’s metal foil may be less than about 8 microns thick and more than about 5 microns thick (p. 6 l. 8-10), which lies entirely within the ranges of claims 18-19.
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 metallic foil to have England’s thickness of about 5-8 microns, because both the reference claims and England are directed to aerosol-generating articles, England teaches that the metal foil is non-combustible and conducts heat, 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 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9, 11-13 of copending Application No. 18/303,623 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claims 1-2, 5, and 8-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-10 of copending Application No. 18/308,170 in view of Batista (US 2021/0289841 A1).
Reference claims 1 and 9 read on instant claims 1 and 17 except for the “ratio of more than 2:1” of instant claim 1. Reference claim 9 recites the portion of the capsule being configured to be flattened, but does not specify the instantly claimed ratio.
Instant claims 1-2, 5, 8-11, and 14-16 are rendered obvious over Batista in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Reference claim 1 reads on instant claims 12-13.
Reference claim 7 reads on instant claim 4.
Reference claim 8 reads on instant claims 18-19.
Reference claim 10 reads on instant claims 6-7.
Claims 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 18, 22 of copending Application No. 18/211,849 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 18, 22 of copending Application No. 18/211,849 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-17 of copending Application No. 18/303,627 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claims 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 19-20 of copending Application No. 18/312,070 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 19-20 of copending Application No. 18/312,070 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 19-20 of copending Application No. 18/312,066 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 19-20 of copending Application No. 18/312,066 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-13, 15-18 of copending Application No. 18/312,063 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-13, 15-18 of copending Application No. 18/312,063 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-12, 14-16, 19-20 of copending Application No. 18/312,058 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-12, 14-16, 19-20 of copending Application No. 18/312,058 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 2, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 9-20 of copending Application No. 18/303,624 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claims 11, 14-16, 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10, 12, 14-20 of copending Application No. 18/303,633 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claims 1-2 and 4-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 9-10, 15 of copending Application No. 18/303,629 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Reference claims 1, 5, and 15 in view of Batista read on instant claims 1-2, 5, 9-11, and 14-17 in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 9-10, 15 of copending Application No. 18/303,629 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Reference claim 4 reads on instant claims 6-7.
Reference claims 5-7 read on instant claims 8, 12-13.
Reference claims 9-10 read on instant claims 18-19.
Claims 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13-15, 19-20 of copending Application No. 18/307,534 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13-15, 19-20 of copending Application No. 18/307,534 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-16 of copending Application No. 18/307,524 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-16 of copending Application No. 18/307,524 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12-17 of copending Application No. 18/308,173 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12-17 of copending Application No. 18/308,173 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 2, 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 12-15 of copending Application No. 18/308,162 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 12-15 of copending Application No. 18/308,162 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 5, 9-11, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 15-20 of copending Application No. 18/307,516 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 15-20 of copending Application No. 18/307,516 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Claims 1-2 and 4-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-11 of copending Application No. 19/259,703 in view of Batista (US 2021/0289841 A1) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Reference claims 1 and 8 in view of Batista read on instant claims 1-2, 5, 8-17 in a similar manner as was applied to reference application 18/312,061 above (see paragraph 15).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-11 of copending Application No. 19/259,703 in view of Batista (US 2021/0289841 A1) and Reevell (GB 2534208 A) in a similar manner as was applied to reference application 18/312,061 above (see paragraph 16).
Reference claim 10 reads on instant claims 18-19.
Reference claim 11 reads on instant claims 6-7.
These are provisional nonstatutory double patenting rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Raichman (WO 2019/005526 A1, provided in IDS dated 04/20/2023) is considered particularly relevant to claims 12-13 and discloses metal foil configured to be heated via resistive heating [0061].
Batista II (WO 2019/030168 A1, provided in IDS dated 08/09/2024) is considered particularly relevant to claims 8-11 and discloses a conical induction coil (Title) and a heating element with elliptical