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 .
Response to Amendment
The amendments entered on 1/29/2026 have been accepted. Claims 1 is amended. Claims 21-22 are new. Claims 6 and 10 are canceled. Claims 1-5, 7-9, 11-22 are pending. Applicant’s amendments to the claims have overcome the 112(b) rejections previously set forth in the non-final office action mailed 10/02/2025. Applicant’s amendments to the claims have overcome the double patenting rejections previously set forth.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Appropriate correction is required.
Drawings
The drawings are objected to because Fig. 23D has several reference lines which do not have associated reference numbers attached to them such that it is not clear what each of the lines without numbers are referring to. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 Objections
Claim 20-21 are objected to because of the following informalities:
Claim 20 line 1 should read “…how the thickness of between 3 microns and 10 microns”, because this is referring to the same thickness as claim 19 of which this claim depends.
Claim 21 should read “…extends around a full circumference of the capsule”, because it was not previously introduced that the capsule has a circumference and thus a
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 7 depends on newly amended claim 1, such that the electric coating is required to be both in a ring-shape and to have a zigzag at a side of the coating. The application as originally filed does not reasonably suggest the possession of a single embodiment which contains both of these features. The ring-shape is shown as in Figs. 20a-20b, while the zigzag is shown in Fig. 20c. Pg. 101 of the originally filed specification details that the coating may be in a ring type shape, or alternatively in a different shape, such as with a zigzag [pg. 101 lines 5-7]. As such, these are listed as alternative embodiments, and there is no suggestion that both alternative embodiments may be present at the same time.
Claim Rejections - 35 USC § 103
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 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 1-5, 7, 9, 13-18, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, of record) in view of Saygili (US 2023/0346019, of record).
Regarding claim 1, Fuisz discloses an apparatus for use with a smoking device that includes at least first and second electrodes (Figure 5, tobacco stick 9 for vaporizer with semi-rings 14 (see Figure 10), [0181]-[0183]), the apparatus comprising:
A capsule (tobacco stick 9 [0181, Fig. 2]) comprising:
A smoking material containing one or more active agents (tobacco stick contains nicotine (active agent), [0078]);
And metallic foil surrounding the smoking material (individual heater 10 is made of foil [Fig. 2, 0188]),
And the metallic foil being configured to be heated via resistive heating by the electrodes driving a current into the metallic foil (individual resistive heater 10 heats through conductive lines and contact rings 17, [0190, Fig. 2]).
Fuisz fails to disclose wherein the capsule further comprises an electrical-contact coating that coats the metallic foil at locations at which the electrodes are configured to contact the capsule.
Saygili teaches a similar cartridge for an aerosol generating device containing foil to heat the smoking material wherein the capsule further comprises an electrical-contact coating that coats the metallic foil at locations at which the electrodes are configured to contact the capsule (heater element may comprise first and second electrical contact portions (synonymous with the contact rings of Fuisz which are the claimed “electrodes”), and the heater sheet may be a foil ([0018] and [0020]), and the electrical contact portion(s) may be coated or plated with an electrically conductive material, [0029]). Saygili also teaches that the coating provides improved contact resistance with an external power supply and provide greater strength to the electrical contact portion(s) [0029].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Saygili to coat the metallic foil where the electrodes are configured with an electrically conductive material because doing so would provide improve contact resistance with an external power supply and provide greater strength to the electrical contact portion(s), as recognized by Saygili [0029]. Both the foils of Suisz and Saygili are positioned in order to heat the smoking material, therefore the teaching of the coating in Saygili is relevant to Fuisz for all of the benefits above that Saygili teaches.
Regarding the electrical-contact coating being in a ring-shape at the locations where the electrodes contact the capsule, see MPEP 2144.04.IV.B. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).” There does not appear to be any evidence in the as-filed specification that the claimed shapes of the coating are significant or lead to any specific properties. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had the shape of the coating be a ring-shape (for example) because doing so would only be a matter of choice to a person of ordinary skill in the art. See MPEP 2144.04.IV.B.
Regarding claims 2 and 3, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Modified Fuisz fails to explicitly disclose wherein the electrical-contact coating coats an outside or inside of the metallic foil. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have coated either the outside or inside (or both) of the metal foil because Saygili teaches that coating the metal foil provides improved contact resistance with an external power supply as well as improved resistance to corrosion ([0029] and [0030] of Saygili) and it would be desirable to realize these benefits as much as possible.
Regarding claim 4, modified Fuisz discloses the apparatus according to claim 1, wherein the electrical-contact coating has a lower resistance than a resistance of the metallic foil (Saygili, coating can reduce electrical resistance, [0030]).
Regarding claim 5, modified Fuisz discloses the apparatus according to claim 1, wherein the electrical-contact coating is configured to prevent generation of hotspots at the locations at which the electrodes are configured to contact the capsule (Saygili discloses the use of at least gold or copper as the coating material in [0029] and in the as-filed specification of the instant application on page 100 states that the coating may be gold or copper and this coating prevents the generation of hotspots, so the coating of Saygili would prevent hotspots as well).
Regarding claim 7, modified Fuisz makes obvious the electrical-contact coating being in a zigzag shape at the locations where the coating contacts the foil, see MPEP 2144.04.IV.B. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).” There does not appear to be any evidence in the as-filed specification that the claimed shapes of the coating are significant or lead to any specific properties. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had the shape of the coating be zigzag (for example) because doing so would only be a matter of choice to a person of ordinary skill in the art. See MPEP 2144.04.IV.B.
Regarding claim 9, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz discloses in a different embodiment wherein the metallic foil is shaped such that at least a portion of the metallic foil is embedded within the smoking material (Figure 15, metal foil resistance heater 18” is rolled together with the tobacco substrate 22, [0222]). Fuisz also discloses that this increases the contact area of the heater with the tobacco substrate and allows for the use of a lower temperature to completely heat the substrate [0222].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fuisz as presented in the rejection in claim 1 above to incorporate the teachings of a separate embodiment of Fuisz to have the metal foil resistance heater rolled together with the tobacco substrate because doing so would increase the contact area of the heater with the tobacco substrate and allow for the use of a lower temperature to completely heat the substrate, as recognized by Fuisz [0222].
Regarding claim 13, modified Fuisz discloses the apparatus according to claim 1, wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, stick has heater (the metallic foil) inside the tipping paper, [0116]),
the paper covering defining openings via which the electrodes are configured to make electrical contact with the metallic foil (Fuisz, tipping paper may be pierced by electrical device contacts so a circuit can be made with device contacts, [0121]).
Regarding claim 14, modified Fuisz discloses the apparatus according to claim 1, 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 (the “smoking device” is not positively cited, making this an “intended use” limitation. See MPEP 2114.II. “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” Examiner holds that this is the case with this limitation, since Fuisz teaches a tobacco stick (see rejection for claim 1 above) for use with a vaporizing device that would be capable of flattening it).
Regarding claim 15, modified Fuisz discloses the apparatus according to claim 14, wherein the capsule is configured to be flattened to define a non-circular 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 ( this is an “intended use” limitation. See MPEP 2114.II. “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” Examiner holds that this is the case with this limitation, since Fuisz teaches a tobacco stick (see rejection for claim 1 above) with a circular cross-section that is capable of being flattened to a non-circular cross-section with the claimed ratio).
Regarding claim 16, modified Fuisz discloses the apparatus according to claim 1, wherein the capsule comprises an elongate capsule having a length of between 15 mm and 150 mm (Figure 2, tobacco stick 9 is elongate ([0181]) and may have a length of 45.2 mm or 83 mm, [0086]-[0087]).
Regarding claim 17, modified Fuisz discloses the apparatus according to claim 16, wherein the capsule is configured such that airflow through the capsule is substantially in an axial direction along a length of the capsule (object to try to maximize airflow through tobacco plug, which is largely in the axial direction of the tobacco stick, [0065]).
Regarding claim 18, modified Fuisz discloses the apparatus according to claim 16, wherein the metallic foil is configured to be heated via resistive heating by the first electrode driving a current to the second electrode (process explained in at least [0190]). Fuisz fails to explicitly disclose that the current is driven along a length of more than 5 mm in an axial direction along the metallic foil, however as can be seen in at least Figure 6 as well as the fact that the tobacco stick can be 83 mm ([0087]) it would be obvious to one of ordinary skill in the art that the distance between the semi-rings 16 (i.e. in contact with the electrodes) is at least 5 mm, and most likely much more. Alternatively, see MPEP 2144.04.IV.A. “In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that that the current is driven along a length of more than 5 mm in an axial direction along the metallic foil because either the fact that the tobacco stick of Fuisz is very long (83mm) and the rings are shown in Figure 6 as being far apart (almost certainly much farther than 5 mm) or because the only difference in the claimed device and the device of Fuisz is relative dimensions and the devices would not perform differently (see MPEP 2144.04.IV.A.).
Regarding claim 21, modified Fuisz makes obvious the apparatus wherein the electrical-contact coating extends around the full circumference of the capsule (in Fuisz, the individual heater 10 (made from foil) includes the two contact rings 17 and heating surface 18 [0186]. As in Figs. 1-2 and 5-6, the individual heater 10 clearly extends around the entire circumference of the tobacco stick 9. Specifically, the heating section 18 extends around the entirety of the circumference of the stick, and the contact ring 17 which is also specified as being a part of the heater extends around the entirety of the circumference of the tobacco stick without any breaks in its surface. And further, as shown in Fig. 5, the electrodes which may be considered "14" are semi rings which connect and form a continuous ring with the semi-rings "16" which may be formed to be active contacts to also provide heating [0185-0190], such that the electrodes (including both “14” and “16”) are formed continuously around the capsule when heating occurs, further indicating that the heating material is located around the circumference thereof. When modified by Saygili to have the foil of the heater sheet coated/plated with electrically conductive material in order to improve the contact resistance, as detailed in the rejection of claim 1 above, the foil would clearly be located along the heater sheet of the metallic foil so as to achieve this purpose. And as the heater sheet may extend around the entire circumference thereof, and as the electrodes may extend around an entire circumference thereof, it would have been obvious for the person of ordinary skill in the art to situate the electrical-contact coating to extend around the full circumference of the capsule so as to achieve the desired effect of improved contact resistance and greater strength to the electrical contact portions [Saygili 0029].
Regarding claim 22, modified Fuisz makes obvious the apparatus wherein the coating is disposed outside the paper covering over the regions of the paper that define the openings so that the coating electrically couples the electrodes to the metallic foil via the openings (as noted in the rejection of claim 13 above, Fuisz may have tipping paper located outside of the metallic foil [0116] and the paper may be pierced by electrical device contacts so a circuit may be made with device contacts [0121]. Saygili teaches that the electrical contact portions may be coated/plated with an electrically conductive material [0029, 0068], in addition to the heater portions which is noted previously. As the paper covering would be contacting the electrodes at these locations where the openings are present and would be located on the outer portion thereof, it would have been obvious to supply the electrically conductive coating at this location so as to provide greater strength to the electrical contact portion or portions [Saygili, 0029, 0068] so as to achieve the inventive goal. And when this coating is applied, the coating would clearly be coupled to the electrodes and to the foil via the openings which are present in the paper as previously noted).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, of record) in view of Saygili (US 2023/0346019, of record) as applied to claim 1 above, and further in view of Worm et al. (US 2019/0289908, of record).
Regarding claim 8, Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to disclose wherein the capsule further comprises a collapse-prevention element configured to facilitate electrical contact between the electrodes and the metallic foil, by preventing the capsule from collapsing. Worm teaches a similar aerosol source member wherein the capsule further comprises a collapse-prevention element configured to facilitate electrical contact between the electrodes and the metallic foil, by preventing the capsule from collapsing (interior of the aerosol source member contains a support to prevent collapsing, [0058]). Worm also teaches that a support on the interior of the aerosol source member prevents collapsing due to any outward pressure of the heating member exerted on the outside of the aerosol source member [0058].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Worm to provide a support (i.e. collapse-prevention element) such as the one taught by Worm because doing so would prevent collapsing due to any outward pressure of the heating member exerted on the outside of the aerosol source member, as recognized by Worm [0058].
Claims 11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, of record) in view of Saygili (US 2023/0346019, of record) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052, of record).
Regarding claim 11, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, stick has heater (the metallic foil) inside the tipping paper, [0116]). Modified Fuisz fails to disclose wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape, and wherein an electrically insulating material is disposed along the band of overlap, to isolate an inner layer of the metallic foil from the electrodes. Ademe teaches a similar smoking article including a metal foil wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape, and wherein an electrically insulating material is disposed along the band of overlap, to isolate an inner layer of the metallic foil from the electrodes (Figures 1 and 2, elongate paper sheet 80 is arranged to form an overlap zone 95 and an adhesive 98 is applied in the overlap zone to secure the paper sheet to itself to form a generally cylindrical shape (see figures) around the metal foil 60 (therefore isolating it), [0048]). Ademe teaches that the adhesive secures the wrapping material in a tubular fashion around the foil [0048].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to form an overlap zone with the tipping paper and use an adhesive to form a cylindrical shape around the metallic foil because doing so would secure the wrapping material in a tubular fashion around the foil [0048].
Regarding claims 19-20, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Modified Fuisz fails to explicitly disclose wherein the metallic foil has a thickness of between 1 micron and 20 microns or 3 microns to 10 microns.
Ademe teaches a similar smoking article including a metal foil wherein the foil strip has a thickness of 0.0005 mm to 0.05 mm (0.5 microns to 50 microns, [0076], this overlaps with the claimed ranges). Ademe also teaches that the foil strip enhances the heat transfer between the heat generation segment and the aerosol forming materials [0077].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to have made the foil a thickness of between 0.5 microns and 50 microns (which overlaps with the claimed ranges) because this foil enhances the heat transfer between the heat generation segment and the aerosol forming materials, as recognized by Ademe [0077].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, of record) in view of Saygili (US 2023/0346019, of record) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052, of record) and Bowen et al. (US 2020/0037669, of record).
Regarding claim 12, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, stick has heater (the metallic foil) inside the tipping paper, [0116]). Modified Fuisz fails to disclose the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape. Ademe teaches a similar smoking article including a metal foil wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape (Figures 1 and 2, elongate paper sheet 80 is arranged to form an overlap zone 95 and an adhesive 98 is applied in the overlap zone to secure the paper sheet to itself to form a generally cylindrical shape (see figures) around the metal foil 60 (therefore isolating it), [0048]). Ademe teaches that the adhesive secures the wrapping material in a tubular fashion around the foil [0048].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to form an overlap zone with the tipping paper and use an adhesive to form a cylindrical shape around the metallic foil because doing so would secure the wrapping material in a tubular fashion around the foil [0048].
Modified Fuisz also fails to disclose wherein the metallic foil is treated along the band of overlap, in order to increase resistance of the metallic foil along the band of overlap. Bowen teaches a vaporizer cartridge with a heating element made out foil wherein is treated along the band of overlap, in order to increase resistance of the metallic foil along the band of overlap (foil can be treated (by perforation, varying thickness, etc.) to create different electrical resistance areas that can affect the temperature reached when heating the foil (meaning resistance can be increased where desired), [0071]). Bowen also teaches that this allows for different temperatures to be reached in different parts of the foil as desired [0071].
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Bowen to treat the foil (including the band of overlap as taught by the combination of Fuisz and Ademe above) to create different electrical resistance areas (including increased resistance where desired) because doing so would allow for different parts of the foil to be heated to different temperatures as desired, as recognized by Bowen [0071].
Response to Arguments
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant argues on pgs. 6-7 of their filed remarks dated 1/29/2026 that the claimed ring shape is significant and yields beneficial properties. Applicant cites to pg. 101 lines 11-12 that such a shape diffuses the current.
The Examiner respectfully disagrees. It is noted that the section that Applicant indicates as showing the beneficial properties of a ring-shape do not actually state what Applicant contends. Applicant’s quoted section of pg. 101 lines 11-12 states “For some applications, the coating extends around the full circumference of the capsule, such that the coating diffuses the current, which is applied to the capsule by electrodes, uniformly around the circumference of the capsule”. In contrast, the portion of the specification which refers to the ring shape is pg. 101 lines 5-6 “For some applications, the coating is applied in a ring shape, as shown in Figs. 20A and 20B. Alternatively the coating is applied in a different shape”. Therefore, it seems that the beneficial structure stated by Applicant is NOT tied to a specific “ring shape”, but rather to the structure of the coating extending around the full circumference of the capsule. The instant specification in no way states or reasonably suggests that the ring shape results in any specific properties.
This is an important distinction, as a "ring shape" may include embodiments that do not extend fully around the circumference of the capsule, as a "ring shape" under the broadest reasonable interpretation when read in light of the specification may be an open ring with a gap between edges (which isa well-known type of "ring shape"), a bypass ring wherein there is overlap, etc. The specification provides no specific details that the "ring shape" as claimed results in these specific properties that are listed or that the ring shape necessarily extends around a full circumference of the capsule, and instead this seems to be tied to the circumference aspects which application argues. The specification merely states that it may be in a ring shape, or alternatively in a different shape, with no weight given to these different shapes. And Figs. 20A-20B merely show a two-dimensional side view of the capsule and of the ring shape, such that no clear determination can
Applicant’s own inclusion of claim 21 (which specifically recites the limitations of the coating extending around the circumference of the capsule) supports the interpretation above according to the doctrine of claim differentiation. "[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips v. AWH Corporation 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under claim differentiation, there is an "especially strong" presumption that an independent claim does not require a limitation that is "the only meaningful difference" between that claim and its dependent claim; otherwise the dependent claim would be superfluous. Interdigital Trade Commission v. Nokia Inc., No. 2010-1093 (Fed. Cir. 2012). In other words, Applicant’s own dependent claims gives rise to the presumption that the “ring shape” as claim in independent claim 1 does not require the coating to extend around the full circumference of the capsule, such that Applicant’s arguments as to pg. 101 lines 11-12 cannot be found convincing. As such, the rationale as laid out in the rejections in the non-final rejection and in the rejections above are still found applicable.
Regarding the new claim 21, it is noted that the combination of Fuisz and Saygili reasonably suggests the electrical-contact coating which extends around the full circumference of the capsule in a ring-shape to the person of ordinary skill in the art. See rejection above for details.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS F SCHNEIDER whose telephone number is (571)272-4857. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights