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 .
Status of the Claims
Claims 1-16, 19-22 are pending and are subject to this office action. Claims 1-16 and 19-20 have been amended, claims 17-18 are cancelled and claims 21-22 are newly added.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 10/22/2025 containing amendments and remarks to the claims.
Applicant has amended claim 7 to require a first and second characteristic instead of a first and second configuration and claim 13 to require the metallic foil be heated by a smoking device instead of one or more heating elements. Therefore, the amendment overcomes the rejection of claims 7, and 13-14 under 35 U.S.C. 112(b).
Response to Arguments
Applicant’s arguments, see pg. 7-9, filed 10/22/2025, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) and 102(a)(2) have been fully considered and are persuasive. Applicant has amended claim 1 to require that the locations of the capsule configured to contact the electrodes are spaced by more than 5mm, which was not previously presented. Therefore, the anticipation rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a new interpretation of previously applied prior art.
On pg. 7-8, Applicant argues that Fuisz does not disclose, “wherein at locations of the capsule configured to contact the electrodes, the metallic foil is not covered with paper such that the metallic foil is exposed to the electrodes.” The Examiner disagrees. Fuisz discloses an embodiment where the heater (18) is on the inside of the paper with the contacts (23) on the outside ([0116]). The contacts being present on the outside of the paper reasonably suggests the contacts (i.e. locations of the capsules configured to contact the electrodes) are not covered with paper such that the metallic foil is exposed to the electrodes.
On pg. 8-9, Applicant argues that Fuisz discloses a tobacco stick where the heater is designed for current to travel radially into the tobacco stick instead of axially. The Examiner disagrees. Fuisz discloses the heating elements (18) are electrically connected to the semi rings/electrodes (14) of the vaporizer to create an electrical circuit comprising the heating elements (18’), conductive lines (15), and a power unit (3, Fig. 20, [0031, 0229]). To complete the electrical circuit, the current would need to travel axially through the tobacco stick. Fuisz also discloses the upper electrode is positive and the lower electrode is negative which further suggests the that current flows axially through the metal foil in the tobacco stick (9, Fig. 11, [0184, 0190]).
On pg. 9, Applicant argues that Fuisz does not disclose the limitations in claims 2 and 3. The Examiner agrees. Fuisz discloses embodiments where the metallic foil (18”) is folded (Fig. 33, Fig. 34), and that the metal foil heater may be folded together with tobacco substrate, to increase the contact area between heater and tobacco substrate ([0179]). However, Fuisz does not clearly point out the position of the electrical contacts in these embodiments in a manner that suggests the axial spacing of the contacts required in claim 1. However, upon further consideration, a new rejection is made in view of a newly found prior art.
On pg. 10, Applicant argues that the rejection of claims 1 and 10 under 35 U.S.C. 101 are moot in view of the amendments to claim 1. The Examiner agrees and the rejection is withdrawn. However, a non-statuary double patenting rejection is made below in view of the amendments to claim 1.
The rejections below are maintained and modified where necessitated by Applicant’s amendment.
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.
Claims 1, 4, 7, 12-14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023).
Regarding claim 1, Fuisz discloses a tobacco stick (9, “smoking article/capsule”, Fig. 15), comprising:
A metal foil resistance heater (18’) rolled together with a tobacco substrate (22, Fig. 15, [0222])
The outer edge of the metallic foil (18) surrounds the tobacco substrate (22) and is wound in a spiral that is embedded in the tobacco substrate (22, Fig. 15)
The tobacco stick (9) is configured for insertion into a vaporizing device with two semi-rings (14, “a first and second electrode”) that contact the contacts (23) of the tobacco stick (9, Fig. 10, [0183-0184], Fig. 16, [0023-0024]).
An embodiment where the heater (18) is on the inside of the paper with the contacts (23) on the outside which reasonably suggests the contacts (i.e. locations of the capsules configured to contact the electrodes) are not covered with paper such that the metallic foil is exposed to the electrodes ([0116, 0224])
Fuisz does not explicitly disclose the locations of the capsule configured to contact the foil are spaced apart more than 5mm in an axial direction.
However, Fuisz discloses the chamber length of a similar device (GLOTM device) is 77.5mm ([0087]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing the chamber in a length of 77.5mm, Fuisz discloses two electrode rings (14) spaced axially within a chamber but is silent to the dimensions of the chamber, Fuisz teaches a chamber length of a similar device is 77.5mm and one having ordinary skill in the art would be motivated to look to similar devices when selecting chamber dimensions, and this involves applying a known chamber length to a similar device to yield predictable results.
Fuisz discloses the electrode rings (14) are spaced in the center of the chamber having about a third of the chamber above the rings (14), a third of the chamber length below the rings (14), and a third of the chamber length between the rings (14, Fig. 9) which reasonably suggests the electrode rings (14) are spaced by a length that overlaps with the claimed range of greater than 5mm which reasonably suggests the contacts (23) on the smoking article configured to contact the electrodes (14) are also spaced axially by a length that overlaps with the claimed range of greater than 5mm and is therefore considered prima facie obvious.
Regarding claim 4, Fuisz discloses the metallic foil (18) is wound in a spiral through the tobacco substrate (22, Fig. 15, [0222]).
Regarding claim 7, Fuisz discloses the metal foil resistance heater (18) has contacts (23) for contacting a semi-ring (14, “electrodes”) of the vaporizer and a region between the contacts (23) comprising the metallic foil (18”) that surrounds the tobacco substrate (22, Fig. 15, [0222-02224]).
The specification discloses a characteristic may be the presence or absence of holes in the foil (pg. 29).
Fuisz discloses an embodiment where the contacts are free of holes and the foil in between the contacts (23) comprises a mesh with holes (Fig. 19, [0228]) which is considered to meet the limitation of a first characteristic at the locations configured to contact the electrodes, a second characteristics in between the electrode contact points, where the first characteristic is different from the second characteristic.
Regarding claim 12, Fuisz discloses:
The tobacco stick (9) may be wrapped in a paper material ([0180]).
The metallic foil resistance heater (18) comprises contacts (23) disposed on the outside of the tobacco stick (9) for contact with semi-rings (14, “electrodes”) of a vaporizer (Fig. 16, [0138, 0222-0224]).
An embodiment where the heater (18) is on the inside of the paper with the contacts (23) on the outside ([0116])
Fuisz does not explicitly disclose openings in the outer paper wrapping where the electrodes of a smoking device can contact the metallic foil. However, Fuisz discloses the tobacco stick where a metallic foil resistance heater (18) is on the inside of a paper wrapping with contacts (23) disposed on the outside of the paper configured for connection with semi-rings (14, “electrodes”) of a vaporing device which reasonably suggests openings would be present in the paper wrapping to allow contact between the semi rings (14) and the metallic foil resistance heater (18).
Regarding claim 13, Fuisz discloses a tobacco stick (9) comprising a metallic foil resistance heater (18) and a tobacco substrate (22, Fig. 15, [0222]).
The Examiner notes that claim 13 is directed to an apparatus for use with a smoking device and is limited to the apparatus. The smoking device flattening the capsule does not impart patentability to the claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tobacco stick (9) disclosed by Fuisz comprises a tobacco substrate (22) and metallic foil. A person having ordinary skill in the art would recognize that the tobacco stick is capable of being flattened by a smoking device and therefore the tobacco stick (9) is considered to be capable of being flattened by a smoking device prior to the metallic foil being heated by the smoking device.
Regarding claim 14, Fuisz discloses a tobacco stick (9) with a circular cross-sectional shape. A person having ordinary skill in the art would reasonably expect a cylindrical tobacco stick to have a non-circular cross-section shape after it has been flattened.
Regarding claim 21, Fuisz does not explicitly disclose the locations of the capsule configured to contact the foil are spaced apart more than 15mm in an axial direction.
However, Fuisz discloses the chamber length of a similar device (GLOTM device) is 77.5mm ([0087]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing the chamber in a length of 77.5mm, Saygili teaches the electrical contact coating improves contact resistance and strength of the electrical contact portion but teaches a chamber a length of a similar device is 77.5mm and one having ordinary skill in the art would be motivated to look to similar devices for workable dimensions , and this involves applying a known chamber length to a similar device to yield predictable results.
Fuisz discloses the electrode rings (14) are spaced in the center of the chamber having about a third of the chamber above the rings (14), a third of the chamber length below the rings (14), and a third of the chamber length between the rings (14, Fig. 9) which reasonably suggests the electrode rings (14) are spaced by a length that overlaps with the claimed range of greater than 15mm and which reasonably suggests the contacts (23) on the smoking article configured to contact the electrodes (14) are also spaced axially by a length that overlaps with the claimed range of greater than 15mm and is therefore considered prima facie obvious.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023) in view of Zhang (CN 114868972 A, hereinafter referring to the English machine translation provided).
Regarding claim 2, Fuisz discloses embodiments where the metal foil heater is folded together with tobacco substrate, to increase the contact area between heater and tobacco substrate (Fig. 33, Fig. 34, [0179]).
Fuisz does not explicitly point out the position of the electrical contacts in the folded embodiment.
However, Zhang, directed to an e-cigarette cartridge (Fig. 1, Fig. 5), discloses:
An e-cigarette cartridge comprising a metal foil heating element (2) wound around a baking object (1, i.e. a smoking material) and folded in an “accordion style” to increase the contact area between the baking object (1) and the metal foil (2) to promote uniform heating (Fig. 5, [0027, 0035]).
The u-shaped turns in the metal foil (2, Fig. 5) are considered to meet the claim limitation of ribs embedded in the smoking material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by folding the metallic foil with the tobacco substrate as taught by Zhang, because both Fuisz and Zhang are directed to aerosol generating articles, Zhang teaches the folded configured promotes uniform heating, and this involves applying a known foil heater configuration to a similar smoking article yield predictable results.
Regarding claim 3, Fuisz discloses embodiments where the metal foil heater is folded together with tobacco substrate, to increase the contact area between heater and tobacco substrate (Fig. 33, Fig. 34, [0179]).
Fuisz does not explicitly point out the position of the electrical contacts in the folded embodiment.
However, Zhang, directed to an e-cigarette cartridge (Fig. 1, Fig. 5), discloses:
An e-cigarette cartridge comprising a metal foil heating element (2) wound around a baking object (1, i.e. a smoking material) and folded in an “accordion style” to increase the contact area between the baking object (1) and the metal foil (2) to promote uniform heating (Fig. 5, [0027, 0035]).
The straight portions metal foil (2) on the opposing ends of the folded portion (Fig. 5) are considered to meet the claim limitation of a flap embedded in the smoking material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by folding the metallic foil with the tobacco substrate as taught by Zhang, because both Fuisz and Zhang are directed to aerosol generating articles, Zhang teaches the folded configured promotes uniform heating, and this involves applying a known foil heater configuration to a similar smoking article yield predictable results.
Claims 5 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023), as applied to claim 1 above, in view of Reevell (GB 2534208 A, as cited on IDS dated 08/12/2024).
Regarding claims 5 and 22, Fuisz discloses a smoking device designed for a tobacco stick to be placed in the chamber without deforming or damaging the electrical contact surfaces of the tobacco stick ([0084]).
Fuisz does not explicitly disclose a collapse prevention element configured to facilitate electrical contact between the electrodes and the foil, or a collapse prevention element that is only present at the axial locations configured to contact the electrodes.
However, Reevell, directed to an aerosol generating article (Fig. 11), discloses:
An aerosol generating article comprising a non-compressible element (52, 54) that cannot be easily compressed by the hand of an average user (Fig. 11, pg. 10 lines 30-34, pg. 29 lines 24-31)
The non compressible element may prevent a region of the aerosol generating article from being compressed by an aerosol generating device (pg. 11 lines 19-22)
The non compressible element may be in tubular form (Pg. 11 line 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing a non-compressible element at the axial locations configured to contact the electrodes as taught by Reevell because both Fuisz and Reevell are directed to aerosol generating articles, Fuisz discloses a vaporizer design the prevents damage to the contact points on the tobacco stick and Reevell discloses a non-compressible element to prevent compression of a smoking article in specific regions, and this involves applying a known collapse prevention element to a similar smoking article to yield predictable results of preventing damage to the contact point on the tobacco stick.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023) in view of Saygili (US 20230346019 A1).
Regarding claim 6, Fuisz discloses the tobacco stick (9) comprises electrical contacts (23, Fig. 16, [0023-0024]).
However, Saygili, directed to an aerosol-generating device (abstract, Fig. 1B), discloses:
A resistive heater element (32) formed of a metallic foil having a heater portion (36) connected to two contact portions (25, 37) for connection to electrical contacts (15, 17) of the main unit of the device (Fig. 1B, [0186-0187]); and
The electrical contact portions are coated with an electrically conductive material such as gold or copper to improve contact resistance with the power supply and provide greater strength to the electrical contact portions ([0029, 0068]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by coating the contacts of the tobacco stick with an electrically conductive material such as gold or copper as taught by Saygili because both Fuisz and Saygili are directed to aerosol generating devices, Saygili teaches the electrical contact coating improves contact resistance and strength of the electrical contact portion, and this involves applying a known coating to an electrical contact in a similar device to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023) in view of Althorpe (US 20170367407 A1).
Regarding claim 8, Fuisz is silent to an inner lining on the metallic foil for diffusing heat generated by the metallic foil.
However, Althorpe, directed to electronic nicotine delivery system (abstract), discloses:
An electric resistance heater (14) contained in a heat diffusing material to prevent hot spots of the surface of the heater (14, Fig. 2A, [0042]); and
The heater is in the form of metallic foil between two layers of a heat diffusing material such as polyimide ([0059]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing a polyimide heat diffusing layer on the metallic foil as taught by Althorpe because both Fuisz and Althorpe are directed to aerosol generating devices, Althorpe teaches polyimide heat diffusing material prevents hot spots on the heater, and this involves applying a known heat diffusing layer to metallic foil heater in a similar device to yield predictable results.
Claim 9, 10, 15, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023) in view of Ademe (US 20150157052 A1).
Regarding claim 9, Fuisz discloses the tobacco stick (9) may be wrapped in a paper material ([0180]).
Fuisz does not explicitly disclose band of overlap in the paper wrapper with an electrically insulating material disposed between the band of overlap.
However, Ademe, directed to a smoking article (abstract, Fig. 1), discloses:
An outer wrapping material (80) arranged so that one end of the outer wrapping material (80) overlaps the opposite end resulting in an overlap zone (95, Fig. 1, Fig. 2, [0047, 0048]).
An adhesive (98) is applied to the overlap zone (95) to secure the outer wrapping (80) around a heat conducting foil (60) in a tubular fashion (Fig. 2, [0048])
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by affixing the paper wrapper around the metallic foil with an overlap zone secured with an adhesive as taught by Ademe because both Fuisz and Ademe are directed to aerosol generating devices, Ademe teaches the adhesive and overlap zone secure the paper covering around the smoking article, and this involves applying a known means of affixing a paper covering to a smoking article in a similar smoking article to yield predictable results.
A person having ordinary skill in the art would reasonably expect an adhesive used to connect a paper wrapper to a smoking article to be an electrically insulting material and therefore isolate the inner layer of the metallic foil from the electrodes of the device.
Regarding claim 10, Fuisz discloses the tobacco stick (9) may be wrapped in a paper material ([0180]).
Fuisz does not explicitly disclose the paper is adhered to itself along a band of overlap.
However, Ademe, directed to a smoking article (abstract, Fig. 1), discloses:
An outer wrapping material (80) arranged so that one end of the outer wrapping material (80) overlaps the opposite end resulting in an overlap zone (95, Fig. 1, Fig. 2, [0047, 0048]).
An adhesive (98) is applied to the overlap zone (95) to secure the outer wrapping (80) around a heat conducting foil (60) in a tubular fashion (Fig. 2, [0048])
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by affixing the paper wrapper around the metallic foil with an overlap zone secured with an adhesive as taught by Ademe because both Fuisz and Ademe are directed to aerosol generating devices, Ademe teaches the adhesive and overlap zone secure the paper covering around the smoking article, and this involves applying a known means of affixing a paper covering to a smoking article in a similar smoking article to yield predictable results.
Fuisz further discloses an embodiment where the foil (18”) in between the contacts (23) comprises a mesh with holes (Fig. 19, [0228]).
The specification discloses slits (136) in the metal foil to increase the resistance along the band of overlap (pg. 31, Fig. 24A, 24B).
A person having ordinary skill in the art would reasonably expect holes in the metallic foil to increase the resistance and since the holes are present throughout the foil disposed within the paper covering, a person having ordinary skill in the art would further recognize that the holes would increase the resistance of the metallic foil along the band of overlap in the outer paper covering.
Regarding claim 15, Fuisz is silent to the length of the tobacco stick (9).
However, Ademe, directed to a smoking article (abstract, 10, Fig. 1), discloses:
A smoking article (10) comprising an aerosol generating segment (55) circumscribed by a metal foil (60, Fig. 1, [0038])
The smoking article (10) has a length of 70-120 mm ([0045]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing the tobacco stick in a length of 70 -120 mm as taught by Ademe because both Fuisz and Ademe are directed to aerosol generating devices, Fuisz is silent to the length of the tobacco stick, Ademe teaches a known range of lengths for a smoking article having a metallic foil heater, and one having ordinary skill in the art would be motivated to look to similar smoking articles for workable ranges of length and this involves applying a known length to a similar smoking article to yield predictable results.
Regarding claim 16, Fuisz discloses the user draws on the end of the tobacco stick (9) to draw heated air axially through the length of the tobacco stick (9, [0206]).
Regarding claims 19 and 20, Fuisz is silent to the thickness of the metallic foil resistance heater (18).
However, Ademe, directed to a smoking article (abstract, 10, Fig. 1), discloses:
A smoking article (10) comprising an aerosol generating segment (55) circumscribed by a metal foil (60, Fig. 1, [0038])
The metal foil (60) has a thickness of about 0.0005 to 0.05mm ([0038, 0076]). The claimed ranges lie within the range taught by the prior art and are therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by providing the metallic foil in a thickness of 0.0005 to 0.05mm as taught by Ademe because both Fuisz and Ademe are directed to aerosol generating devices, Fuisz is silent to the thickness of the foil, Ademe teaches a known range of thicknesses for a metallic foil heater, and one having ordinary skill in the art would be motivated to look to similar smoking articles for workable ranges of metallic foil thickness and this involves applying a known thickness to a similar metallic foil in a similar smoking article to yield predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 04/26/2023) in view of Jang (US 20220110368 A1, as cited on IDS dated 08/12/2024).
Regarding claim 11, Fuisz discloses a cylinder shaped tobacco stick (9) having a cylindrical, oval, rectangular shape ([0180]).
Fuisz does not explicitly disclose the tobacco stick (9) has a cross-sectional shape where the ratio of the long side of the cross-section to the short side of the cross-section is more than 2:1.
However, Jang, directed to an aerosol generating device (abstract), discloses:
An aerosol generating article (2) where the aerosol generating substrate portion (21) is pressed so that the diameter is 10% to 50% of the diameter of the aerosol generating article (2) prior to pressing (Fig. 5, [0057]). A person having ordinary skill in the art would recognize that pressing an aerosol generating article to 10 to 50% of the diameter of the unpressed article (2) would result in a cross-sectional shape where the ratio of the long side of the cross-section to the short side of the cross-section is in a range that overlaps with the ratio of more than 2:1.
Pressing the aerosol-generating substrate (21) results in minimizing the temperature differences between portions of the aerosol-generating substrate (21) allowing the aerosol-generating substrate (21) to be rapidly heated to a target temperature ([0017]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz by pressing the tobacco stick to have a diameter that is 10-50% less as taught by Jang because both Fuisz and Jang are directed to aerosol generating devices, Jang teaches pressing the smoking article allows for faster heat up time, and this involves pressing a smoking article in a known manner to yield predictable results.
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 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim claims 1, 5, and 10 of copending Application No. 18/312,061.
Although the claims at issue are not identical, they are not patentably distinct from each other. The co-pending claims and the rejected claims differ in that the features of the rejection independent claim are present in multiple claims of the cop-ending application. However, it would have been obvious to one of ordinary skill in the art to combine the features of the dependent claims to arrive at the instantly claimed invention.
Therefore, all of the elements of provisionally rejected claims 1 and 7 are present and obvious over conflicting claims 1, 5, and 10 of co-pending Application No. 18/312,061.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755