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 .
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, claims 3-6 lack support. The provisional application is silent on receiving a user indication, a first/second smoking mode, vaporizing for a predefined period of time in the first mode, and vaporizing while receiving an active input from the user in the second mode (all per claim 3). Claims 4-6 depend from claim 3 and are therefore not supported. Application No. PCT/IB2023/052521 does support claims 3-6 (WO 2024/150036 A1 p. 44 l. 20-30), and thus claims 3-6 have an effective filing date of 03/15/2023. Claims 1-2 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 cylindrically-shaped capsule that contains a smoking material containing one or more active agents”. The “capsule”, “smoking material”, and “active agents” 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, claim limitations directed to the capsule and components thereof are considered to have patentable weight only to the extent that they dictate the structure of the claimed apparatus. See MPEP 2115; see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: (1) “mechanical elements that are configured to flatten at least part of the portion of the capsule” in claim 2 and (2) “a mechanism configured to bring the electrodes into pressurized contact with the capsule” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification discloses (1) one or more mechanical elements 214 which may include gear wheels 216, motor 218, wheels, plates, cuboid elements, blade like elements, funnel 242, roller wheels 244, material 250 with high magnetic permeability, and/or electrodes 30 which are brought into pressurized contact to flatten the capsule 20 and/or the coil 240 (p. 35-39, Figs. 26-32B). The specification discloses (2) a mechanism 230 that is configured to bring electrodes 30 and/or mechanical elements 214 into pressurized contact with capsule 20 in order to enhance electrical contact between the electrodes and the heating element of the capsule and/or flatten a portion of the capsule. The mechanism 230 may include one or more compression springs 232 that are configured to generate a counterforce in response to being compressed, wherein the pressing of the button causes compression of the compression springs, such that upon release of the button, the compression springs bring the electrodes into pressurized contact with the capsule (p. 36-37, Figs. 29A-D).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 2, 8-9, 11-15, 17, and 19-20 are objected to because they introduce elements with “a/an” which have been previously introduced and should therefore be referred to with “the”:
Claims 2 and 8-9 should each recite “[[a]]the part of the portion of the capsule” which was introduced in claim 1;
Claims 11-12 should each recite “[[a]]the long side” and “[[a]]the short side” which were introduced in claim 10;
Claims 13-14 should each recite “[[a]]the cylindrically-shaped which is elongate and which has…” because the capsule was introduced in claim 1;
Claim 14 should recite “having [[a]]the length [[of]]which is” because claim 13 introduced the claimed length;
Claim 15 should recite “[[a]]the portion of the capsule” which was introduced in claim 1;
Claim 17 should recite “[[a]]the length of the capsule” in the last line because the length was previously introduced in the claim;
Claims 19-20 should each recite “[[a]]the capsule” which was introduced in claim 1;
Claim 20 should recite “[[a]]the metallic foil” which was introduced in claim 19.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 7-10, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Batista (WO 2019/030168 A1, provided in IDS dated 08/13/2024).
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Regarding claim 1, Batista is directed to an aerosol-generating device 32 which is configured to receive at least a portion of an aerosol-generating article 42 (Title, Abstract). The device 32 (a “smoking device” as claimed) includes a chamber 40 (“cylindrically-shaped insertion port”) and a heating element 48 (“non-cylindrical housing”) which together receive the article 42 (p. 10 l. 21-p. 11 l. 8, Figs. 6c-7, reproduced below). As shown in Fig. 6c, the chamber 40 defines an initial opening section which is cylindrically shaped (before the first heating element 48.1). The heating element 48 has an elliptical cross-section which flattens the consumable 42 during its insertion and during heating (p. 6 l. 32-p. 7 l. 2, p. 10 l. 21-p. 11 l. 8, Figs. 6-7).
Regarding claim 2, the heating element 48 comprises individual elements 48.1-48.7 (“mechanical elements”) which together flatten the consumable 42 during its insertion (p. 10 l. 21-29, Figs. 6-7).
Regarding claim 7, an induction coil 30 (“coil”) surrounds the heating element 48 and inserted consumable 42 (p. 11 l. 5-8, Fig. 7).
Regarding claim 8, the coil 30 has a conical shape (i.e., partially flattened) (which reads on “wherein the coil is configured to be flattened while at least part of the portion of the capsule that contains the smoking material is disposed within the coil”) (p. 9 l. 9-16, p. 11 l. 5-8, Figs. 3, 7).
Regarding claim 9, the coil 30 has a conical shape (which reads on “wherein the coil is shaped to define a non-circular cross-sectional shape even before part of the portion of the capsule that contains the smoking material is introduced to within the coil”) (p. 9 l. 9-16, p. 11 l. 5-8, Figs. 3, 7). As shown in Figs 6c-7, the inserted consumable 42 begins to be flattened by the heating element 48 while entering the device 32, before reaching the interior of the coil 30 (which reads on “wherein the smoking device is configured to flatten the part of the portion of the capsule that contains the smoking material prior to the part of the portion of the capsule that contains the smoking material being introduced to within the coil” per claim 9).
Alternatively, claim 9 is rejected under 35 USC 103 in view of Batista, as set forth below.
Regarding claim 10, the heating element 48 may have an elliptical cross-section (p. 3 l. 10-11, p. 10 l. 21-23), with a long:short side ratio of more than 2:1 as shown immediately below in annotated Fig. 6a.
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Regarding claim 13, Batista discloses a system including the device 32 and consumable 42 which may have a size comparable to a conventional cigar or cigarette, with a total length of approximately 30-150 mm (p. 8 l. 6-11). This disclosure overlaps the claimed range (15-150 mm) with sufficient specificity to constitute anticipation. See MPEP 2131.03(II); see also ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/030168 A1) as applied to claim 1, in view of Dr. Dabber (2023, Jan. 27. Switch user manual. Dr. Dabber Knowledge Base. https://drdabber.helpscoutdocs.com/article/76-switch-user-manual, copy provided herewith).
Regarding claim 3, Batista discloses a controller 38 which may comprise a programmable microprocessor (Abstract, p. 7 l. 10). The controller 38 may regulate power supply, and may continuously supply power following activation for about 6 minutes (which reads on the “first mode” as claimed) (p. 7 l. 10-22). The controller 38 may intermittently supply power on a puff-by-puff basis or by the user pressing and holding a button (which reads on the “second mode” as claimed) (p. 7 l. 10-22, p. 7 l. 30-32). Batista discloses user activation of the heater via the puff sensor or button (p. 7 l. 30-p. 8 l. 2), but fails to specifically disclose configuring the controller 38 to “receive an indication from a user” for selecting whether to supply power continuously for a time period or on a puff-by-puff basis.
Dr. Dabber is a user manual directed to the Dr. Dabber Switch vaporizer product (p. 1-2). Dr. Dabber discloses various modes of operation which are accessible to a user via buttons and switches (“receive an indication from a user”) (p. 7-8, 13-14). The modes include an Oil Mode, a Leaf Mode, and an Advanced Mode (each of which reads on the “first mode” as claimed), wherein the device holds a heating profile for 15 seconds in the standard oil/leaf modes and 5-30 seconds in the advanced mode (“a predefined period of time”) (p. 7-8, 13). Dr. Dabber discloses a Train Your Hold Time feature (“second mode”) wherein the user presses and holds a Go button, causing the device to hold a heating profile until the user releases the button (“only while receiving an active input”) (p. 14). These features provide the device with precise power controls and carefully calibrated temperature profiles to optimize the user experience (p. 3-4).
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 by configuring the controller 38 and button such that a user may select between a first mode wherein power is continuously supplied for a time period, or a second mode wherein power is supplied intermittently via puff/button activation, such modes being taught by both Batista and Dr. Dabber, because Batista and Dr. Dabber are directed to vaporization devices with control features, Dr. Dabber teaches that this optimizes the user experience, 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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/030168 A1) and Dr. Dabber as applied to claim 3, further in view of Lim (KR 20190049389 A, English translation provided herewith).
Regarding claims 4-5, modified Batista discloses the controller 38 and button as set forth immediately above. However, modified Batista fails to explicitly disclose “wherein the control component is configured to preheat the smoking material to a temperature that is below the vaporization temperature of the one or more active agents, prior to receiving the indication…” per claim 4 and “automatically, in response to the capsule being inserted into the smoking device” per claim 5.
Lim is directed to an apparatus for generating aerosols and a method for controlling the apparatus (Title). The device has an insertion hole to receive a cigarette, and the device enters an ON mode when the controller determines the insertion hole is open [0009]. In an embodiment, once the controller determines that a cigarette is inserted, the controller performs preheating to a preset temperature (which reads on claims 4 and 5) [0011, 0098]. This advantageously minimizes the time that a user has to wait for the device to heat [0098]. One of ordinary skill in the art would expect “preheating” and “preliminary heating” as disclosed by Lim to include temperatures which are “below the vaporization temperature of the one or more active agents” as claimed. Further, the temperature may be preset to one desired by the user [0037], which renders obvious the claimed temperature.
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 by configuring the controller 38 such that the device preheats to a preset temperature upon determining that a cigarette is inserted as taught by Lim, because both Batista and Lim are directed to vaporization devices with control features, Lim teaches that this advantageously reduces the user’s waiting time, 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 6, modified Batista fails to disclose “wherein the control component is configured to preheat the smoking material to the temperature that is below the vaporization temperature of the one or more active agents, in response to an input from the user”.
Lim is directed to an apparatus for generating aerosols and a method for controlling the apparatus (Title). The device has an insertion hole to receive a cigarette, and the device enters an ON mode when the controller determines the insertion hole is open [0009]. In an embodiment, the controller preheats to a preset temperature upon receiving a user input through a button [0010, 0095]. One of ordinary skill in the art would recognize that such a configuration advantageously provides a user with additional control over the device (see [0037], explaining that the user may preset the temperature as desired). One of ordinary skill in the art would expect “preheating” and “preliminary heating” as disclosed by Lim to include temperatures which are “below the vaporization temperature of the one or more active agents” as claimed. Further, the temperature may be preset to one desired by the user [0037], which renders obvious the claimed temperature.
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 by configuring the controller 38 and button such that the device preheats to a preset temperature upon the user’s button activation as taught by Lim, because both Batista and Lim are directed to vaporization devices with control features, one of ordinary skill in the art would recognize that this advantageously provides more user control, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 9 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/030168 A1) as applied to claim 7.
Claim 9 is rejected under 35 USC 102 as being anticipated by Batista, as set forth above.
Alternatively, if Batista and the instant claims were interpreted such that heating element 48 fails to flatten the portion of the consumable 42 “prior to” insertion within the coil 30, then claim 9 would be obvious over Batista. It would be a mere change in shape to alter the cross-sectional profile of the chamber 40 to begin flattening the consumable 42 before it reaches the heating element 48. See MPEP 2144.04(IV)(B); see also In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); see also Batista Fig. 6c, showing a slight narrowing of the chamber 40 before the first heating element 48.1.
Claims 11-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/030168 A1) as applied to claims 10 and 13.
Regarding claims 11-12, Batista discloses the elliptical heating element 48 as set forth above in the discussion of claim 10. However, Batista fails to specifically disclose a heating element 48 cross-section with long:short side ratios of “more than 4/6:1” per claims 11-12, respectively. But Batista discloses that the cross-sectional shape of the heating element 48 may change the shape of the consumable 42 upon insertion, and specifically discloses that an elliptical cross-section may flatten the substrate within the consumable 42 in order to optimize heating (p. 6 l. 32-p. 7 l. 2). Thus, one of ordinary skill in the art would recognize that the cross-sectional shape of the heating element 48 is a result-effective variable regarding the heating performance, and would accordingly optimize the cross-sectional shape such that the long:short side ratios are within the claimed ranges. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Applicant’s specification p. 4 (explaining that when a capsule is flattened, smoking material is disposed closer to the heating element than in a circular cross-section), which supports the proposition that routine optimization of Batista would lead one of ordinary skill in the art toward the claimed ranges because Batista and Applicant cite similar rationales.
Regarding claim 14, Batista discloses the system with a total length of approximately 30-150 mm (p. 8 l. 6-11) as set forth above in the discussion of claim 13. This disclosure overlaps the claimed range (50-90 mm) and therefore renders it obvious. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/030168 A1) as applied to claim 1, in view of Fuisz (US 2022/218023, provided in IDS dated 05/09/2023).
Regarding claim 15, Batista discloses the device 32 and consumable 42 as set forth above. However, Batista fails to disclose “wherein the smoking device comprises two or more electrodes that are configured to heat the smoking material by generating resistive heating within the capsule by driving a current through a portion of the capsule” as claimed. Generally, both resistive heating and inductive heating are well known to those of ordinary skill in the art in the context of aerosolization devices.
Fuisz is directed to a vaporizer for smoking cigarettes with individual heater (Title). The vaporizer includes a chamber 8 with active contact semi-rings 14 (“electrodes”) which are connected to a battery 2 and coupled to heaters 10 on a tobacco stick 9 to resistively heat the stick 9 ([0183-184] Figs. 5, 9-12). This arrangement advantageously allows the vaporizer to accept only authorized sticks 9 having suitable heaters 10 [0061], which one of ordinary skill in the art would recognize as a security/safety advantage.
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 by replacing the heating element 48 and induction coil 30 with Fuisz’s active contact semi-rings 14 to perform resistive rather than inductive heating, because both Batista and Fuisz are directed to aerosolization devices, Fuisz teaches that this arrangement advantageously increases security/safety of the device, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In modified Batista where the heating element 48 is removed, one of ordinary skill in the art would provide Batista’s housing 34 and chamber 40 with similar shaping as they are shown in Fig. 6c to preserve the disclosed flattening effect. Thus, the narrowed interior of the housing 34 would read on the “non-cylindrical housing” of claim 1 (rather than the heating element 48 which is removed in the modification). The initial opening section of the chamber 40 would still read on the “cylindrically-shaped insertion port” of claim 1.
Regarding claim 16, Batista fails to disclose “wherein the smoking device comprises a mechanism configured to bring the electrodes into pressurized contact with the capsule, in order to enhance electrical contact between the electrodes and the capsule”.
Fuisz discloses that the device contacts 14 may include pogo pins with springs (“mechanism configured to bring the electrodes into pressurized contact with the capsule”) [0138].
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 by replacing the heating element 48 and induction coil 30 with Fuisz’s active contact semi-rings 14, and to further modify Batista by providing Fuisz’s contacts 14 as pogo pins 14, for the same reasons set forth above in the discussion of claim 15.
Regarding claims 17-18, Batista’s consumable 42 is elongate as shown in Fig. 7. Batista discloses air inlets 44 which allow air to travel from one end of the consumable 42 to the other (p. 10 l. 11-20, Figs. 5a-b). One of ordinary skill in the art would expect the device 32 of Figs. 6-7 to similarly direct airflow along a length of the consumable 42. Batista fails to disclose “wherein a first one of the electrodes is configured to drive the current toward a second one of the electrodes along a length of more than 5 mm in an axial direction along a length of the capsule” per claim 17 and “more than 15 mm” per claim 18.
Fuisz discloses the active contact semi-rings 14 as set forth above. As shown in Figs. 5 and 9-12, two or three semi-rings 14 may be provided and may be spaced apart from one another, such as Figs. 5 and 8-9 showing outermost semi-rings 14 spaced approximately half the height of the chamber 8 from one another. Fuisz also discloses similar prior art devices having chamber lengths of 27.5 mm and 77.5 mm [0086-88]. Thus, one of ordinary skill in the art would expect Fuisz’s chamber 8 to have a similar length of approximately 27.5-77.5 mm. One of ordinary skill would further expect the semi-rings to be spaced apart along approximately half such length, which overlaps the claimed lengths of “more than 5 mm” per claim 17 and “more than 15 mm” per claim 18.
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 by replacing the heating element 48 and induction coil 30 with Fuisz’s active contact semi-rings 14, and to further modify Batista by providing Fuisz’s semi-rings 14 spaced apart by a distance of approximately half of 27.5-77.5 mm, for the same reasons set forth above in the discussion of claim 15.
Regarding claim 19, Batista fails to disclose “wherein the smoking device is configured to receive a capsule that includes a metallic foil surrounding the smoking material, and the electrodes are configured to drive the current through the metallic foil”.
Fuisz discloses the tobacco stick 9 with individual resistive heaters 10 coupled to the semi-rings 14, as set forth above in the discussion of claim 15. The heaters 10 may include metal foil (“metallic foil”) [0179, 0186].
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 by replacing the heating element 48 and induction coil 30 with Fuisz’s active contact semi-rings 14, and to further modify Batista by providing Fuisz’s semi-rings 14 being configured to couple with a metal foil heater on a consumable, for the same reasons set forth above in the discussion of claim 15.
Regarding claim 20, Batista fails to disclose “…and a paper covering that covers the metallic foil and wherein the electrodes are needle shaped and are configured to make electrical contact with the metallic foil by piercing through the paper covering”.
Fuisz discloses the tobacco stick 9 with heaters 10 which may include metal foil as set forth immediately above [0179, 0186]. The stick 9 and metal foil 10 therein may be wrapped in paper (“paper covering”) [0116]. The active contacts 14 may have a pointed end (“needle shaped”) to pierce the paper [0121, 0138].
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 by replacing the heating element 48 and induction coil 30 with Fuisz’s active contacts 14, and to further modify Batista by providing Fuisz’s active contacts 14 with pointed ends for piercing a paper covering to contact a metal foil of a consumable, for the same reasons set forth above in the discussion of claim 15.
Double Patenting
Claim 16 of this application is patentably indistinct from claim 2 of Application No. 18/315,068.
Claim 20 of this application is patentably indistinct from claim 2 of Application No. 18/315,073.
Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 16 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of copending Application No. 18/315,068 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 20 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of copending Application No. 18/315,073 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/315,068 (reference application). Although the claims at issue are not identical (because reference claim 1 from which reference claim 2 depends recites additional limitations not present in the instant claims), they are not patentably distinct from each other because reference claim 2 recites all of the limitations of instant claims 1 and 15 and therefore anticipates the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 15, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/315,073 (reference application). Although the claims at issue are not identical (because reference claim 1 from which reference claim 2 depends recites additional limitations not present in instant claim 1), they are not patentably distinct from each other because reference claim 2 recites all of the limitations of instant claim 1 and therefore anticipates instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/315,059 (reference application). Although the claims at issue are not identical (because reference claim 1 from which reference claim 3 depends recites additional limitations not present in the instant claims), they are not patentably distinct from each other because reference claim 3 recites all of the limitations of instant claims 1, 15, and 17 and therefore anticipates the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/315,063 (reference application). Although the claims at issue are not identical (because reference claim 1 from which reference claim 2 depends recites additional limitations not present in the instant claims), they are not patentably distinct from each other because reference claim 2 recites all of the limitations of instant claims 1 and 15 and therefore anticipates the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Blandino (US 2017/055580 A1, provided in IDS dated 08/13/2024) discloses first and second members 160, 170 which are movable toward each other to compress a heating zone ([0138, Figs. 4A-B), which is considered particularly relevant to claim 8.
Monticone (WO 2023/170182 A1, provided in IDS dated 08/13/2024) discloses a compression device including opposing compression rollers defining a gap therebetween (p. 3 l. 8-32), which is considered particularly relevant to claim 9.
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747