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 4-5 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 4). Claim 5 depends from claim 4 and is therefore not supported. Application No. PCT/IB2023/052523 does support claims 4-5 (WO 2024/150037 A1 provided in IDS dated 08/22/2024 at p. 44 l. 22-p. 45 l. 10), and thus claims 4-5 have an effective filing date of 03/15/2023. Claims 1-3 and 6-20 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 capsule that contains a smoking material containing one or more active agents, the smoking material being covered with a metallic foil”. The “capsule”, “smoking material”, “active agents”, and “metallic foil” 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 in claims 1-20. See MPEP 2115; see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claims 13-14 recite “wherein the electrodes are configured to flatten at least a part of a portion of the capsule [to various cross-sectional ratios]”. Any prior art smoking device which is configured to flatten at least a part of a capsule and alter its cross-section is considered to be structurally indistinguishable from claims 13-14, because the claimed cross-sections are achieved by a combination of (1) the smoking device which is configured to flatten but not further limited by specific structural elements in claims 13-14, and (2) the structure of the capsule, which does not form any part of the claimed apparatus.
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 18 and (2) “a mechanism configured to bring the electrodes into pressurized contact with the capsule” in claims 1-18 (the “mechanism” is further limited in claims 19-20 with sufficient structure to avoid interpretation under 112(f), and is instead afforded its broadest reasonable interpretation in claims 19-20).
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. 34-40, 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. 37-38, 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 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, 6-7, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuisz (US 2022/0218023 A1, provided in IDS dated 05/10/2023).
Regarding claim 1, Fuisz is directed to a vaporizer for smoking cigarettes (Title). The vaporizer (a “smoking device” as claimed) includes a chamber 8 for receiving a tobacco stick 9 (“capsule”) [0181]. The chamber 8 has active contact semi-rings 14 (“first and second electrodes”) which are coupled to heaters 10 on the stick 9 to provide current thereto and resistively heat the stick 9 ([0183-184] Figs. 1-2, 5-6, 9-12). The heaters 10 may include metal foil (“metallic foil”) [0179, 0186]. The active contact semi-rings 14 may include or be pogo pins with springs (“mechanism configured to bring the electrodes into pressurized contact with the capsule”) [0138, 0183].
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Regarding claim 2, the stick 9 may be cylindrical [0180]. The chamber 8 has a portion (“cylindrically-shaped insertion port”) which is cylindrical, as shown in Figs. 5-6. A body portion 11 and flip cover portion 12 (together a “non-cylindrical housing”) define air ducts 13 in the chamber 8 which form a non-cylindrical portion, as shown in Figs. 5-6 [0182].
Claim 6 recites no additional structural limitations and is therefore anticipated for the same reasons as claim 1.
Regarding claim 7, 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, 0183].
Regarding claim 19, the active contact semi-rings 14 may include or be pogo pins with springs (“compression springs”) [0138, 0183].
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 Fuisz (US 2022/0218023 A1) as applied to claim 1, in view of Raichman (WO 2016/147188, provided in IDS dated 05/10/2023).
Fuisz discloses the active contact semi-rings 14 as set forth above, but fails to disclose them being “configured to move axially along a length of the capsule” as claimed.
Raichman is directed to vaporizing devices (Title). Raichman discloses an electrode-movement mechanism, which facilitates high-quality and low-resistance electrical contact (p. 31 l. 4-14). The mechanism may slide the electrodes across a capsule to at least partially remove a coating that has developed on the capsule (p. 31 l. 27-p. 32 l. 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 Fuisz to include the electrode-movement mechanism of Raichman, because both Fuisz and Raichman are directed to vaporization devices, Raichman teaches that this advantageously removes a coating from the capsule, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 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).
Fuisz discloses the vaporizer as set forth above, which includes an electronic control and power unit 3 (“control component”) and a control button 4 [0181]. Fuisz also discloses a warm-up mode [0098] and puff activation of the heater [0073]. However, Fuisz fails to disclose that the control unit 3 is configured to “receive an indication from a user indicating whether they wish to smoke the active agents in a first mode or a second mode; in response to receiving an indication that the user wishes to smoke the active agents in the first mode, heat the smoking material to a vaporization temperature of the one or more active agents for a predefined period of time; and in response to receiving an indication that the user wishes to smoke the active agents in the second mode, only heat the smoking material to the vaporization temperature while receiving an active input from the user that they wish for the smoking material to be heated” as claimed.
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 Fuisz by configuring the control unit 3 and control button 4 such that a user may select between a first mode wherein power is continuously supplied for a time period such as 15 or 5-30 seconds, or a second mode wherein power is supplied upon button press and until release, as taught by Dr. Dabber, because Fuisz and Dr. Dabber are directed to vaporizers, 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).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) and Dr. Dabber as applied to claim 4, further in view of Lim (KR 20190049389 A, English translation provided herewith).
Modified Fuisz discloses the control unit 3 and control button 4 as set forth above. Fuisz further discloses a heating algorithm which includes preheating at lower temperatures before puff-activated heating at higher temperatures ([0251-0254, 0260-0262], Figs. 25-26). However, modified Fuisz fails to explicitly disclose the control unit 3 and button 4 being configured to preheat “prior to receiving the indication from the user indicating whether they wish to smoke the active agents in the first mode or the second mode” as claimed.
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 (“prior to receiving the indication”) [0011, 0098]. This advantageously minimizes the time that a user has to wait for the device to heat [0098].
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 Fuisz by configuring the control unit 3 to carry out Fuisz’s preheating upon determining that a cigarette stick is inserted as taught by Lim, because both Fuisz and Lim are directed to aerosolization devices, 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).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1).
Regarding claims 8-9, air flows primarily through the stick 9 and along its length (“such that airflow through the capsule is substantially along a length of the elongate capsule” per claim 8) ([0065], Fig. 6). Fuisz fails to explicitly disclose the distance between the semi-rings 14 and therefore fails to explicitly disclose “the first electrode driving a current toward the second electrode along a length of the metallic foil of more than 5 mm in an axial direction along a length of the capsule” per claim 8 and “more than 15 mm” per claim 9.
However, Fuisz discloses similar prior art devices having chamber lengths of 27.5 mm and 77.5 mm for accommodating prior art sticks with lengths of 45.2 mm and 83 mm, respectively [0086-87]. Further, Figs. 5 and 9-12 show two or three semi-rings 14 spaced apart from one another. Additionally, one of ordinary skill in the art would expect the semi-rings 14 to be spaced apart in order to avoid short circuits and in order to heat a sufficient length of the stick. Thus, one of ordinary skill in the art would expect Fuisz’s semi-rings 14 to be spaced apart by at least the claimed lengths of “more than 5 mm” per claim 8 and “more than 15 mm” per claim 9. Therefore, the claimed ranges are obvious. See MPEP 2144.05(I); see also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 10-11, Fuisz fails to explicitly disclose the length of the chamber 8 and the stick 9 and therefore fails to explicitly disclose “wherein the smoking device is configured to receive an elongate capsule having a length of between 15 mm and 150 mm” per claim 10 and “between 50 mm and 90 mm” per claim 11. Fuisz discloses similar prior art devices having chamber lengths of 27.5 mm and 77.5 mm for accommodating prior art sticks with lengths of 45.2 mm and 83 mm, respectively [0086-87]. 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 and to at least be capable of accommodating a stick 9 within the length range of approximately 45.2-83 mm, which lies within the claimed ranges and therefore renders them obvious. See MPEP 2144.05(I); see also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Johaentges (WO 2022/189452 A1, provided in IDS dated 08/22/2024).
Regarding claim 12, Fuisz discloses the active contact semi-rings 14 as set forth above, which may be mechanically pressed against the heaters 10 of the stick 9 with sufficient force to reliably fix the stick 9 in the chamber 8 [0134, 0199]. However, Fuisz fails to disclose that such active contacts 14 are configured to “change a shape of the capsule” as claimed.
Johaentges is directed to an electrically conductive consumable for an aerosol generating device (Title, Abstract). The device includes first and second electrodes 4a, b for heating the consumable 1 (p. 12 l. 8-21, Fig. 1a, reproduced below). The electrodes 4a, b compress the consumable 1 to a thickness 8 similar to the largest dimensions of conductive particles 7 in the consumable 1 (which reads on “change a shape”) (p. 13 l. 12-p. 14 l. 6). The thickness 8 may be 0.5-3 mm (p. 12 l. 22-p. 13 l. 3). Reducing the thickness 8 advantageously reduces the contact resistance between the electrodes 4a, b and conductive particles 7 (p. 4 l. 15-20, p. 12 l. 22-p. 13 l. 3).
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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 Fuisz by configuring the semi-rings 14 to press against the heaters 10 and compress the stick 9 to a thickness of 0.5-3 mm as taught by Johaentges, because both Fuisz and Johaentges are directed to aerosolization devices and consumables therefor, Johaentges teaches that this lowers electrical contact resistance and therefore improves heating, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claims 13-14, modified Fuisz fails to explicitly disclose the semi-rings 14 being configured to flatten “such that the part of the portion of the capsule that contains the smoking material defines a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape” per claim 13 and “more than 4:1” per claim 14.
Joahentges’ electrodes 4a, b compress the consumable 1 to a thickness 8 of 0.5-3 mm, as set forth above. One of ordinary skill in the art would recognize that such compression produces a consumable 1 with a cross-section having a long and short side. Although Johaentges does not disclose specific cross-sectional ratios, the disclosure nevertheless renders claims 13-14 obvious. First, the electrodes 4a, b are structurally indistinguishable from the claimed electrodes because the claimed cross-sectional shape ratios may at least partially be attributed to features of the capsule, which forms no part of the claimed apparatus (see Claim Interpretation above). Second, Johaentges discloses that the thickness 8 (which directly affects the cross-sectional shape ratio) is a result-effective variable regarding the contact resistance (p. 4 l. 15-20, p. 12 l. 22-p. 13 l. 3), and thus one of ordinary skill in the art would be motivated to optimize the thickness 8 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 Johaentges would lead one of ordinary skill in the art toward the claimed ranges because Johaentges and Applicant cite similar rationales.
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 Fuisz’s semi-rings 14 to perform the compression such that the stick 9 has a cross-sectional shape with long:short side ratios of greater than 4 to 1, for the same reasons as discussed above with respect to claim 13, and further because such a cross section would be achieved by mere routine optimization of the compression disclosed by Johaentges.
Claims 15-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Monticone (WO 2023/170182 A1, provided in IDS dated 08/22/2024).
Fuisz discloses the vaporizer with chamber 8 for receiving stick 9, as set forth above. The stick 9 is sufficiently compressed to be retained within the chamber, but is not mechanically deformed [0199-0200]. Thus, Fuisz fails to disclose “wherein the smoking device is configured to flatten at least part of a portion of the capsule that contains the smoking material” per claim 15, “roller wheels that are configured to flatten…upon the capsule being inserted into the smoking device” per claim 16, and “mechanical elements that are configured to flatten…by applying mechanical pressure to the capsule” per claim 18.
Monticone is directed to an aerosol-generating device comprising a compression device and method for compressing an aerosol-generating article (Title). The compression device preferably includes opposing compression rollers (p. 3 l. 8-32) (which read on “roller wheels” per claim 16, “mechanical elements” per claim 18, and the flattening of claim 15) defining a gap therebetween. Compressing the article advantageously increases heating efficiency (p. 1 l. 20-27, p. 2 l. 23-p. 3 l. 2), and this configuration compresses the article outside the oven, so that the article is advantageously compressed upon entry (p. 3 l. 26-32).
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 Fuisz to include Monticone’s compression rollers at the entrance to Fuisz’s chamber 8, because both Fuisz and Monticone are directed to aerosolization devices, Monticone teaches that the rollers allow for advantageously compressing the article for better heat transfer, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Jang (EP 3,984,387 A1, provided in IDS dated 08/22/2024).
Fuisz discloses the vaporizer with chamber 8 for receiving stick 9, as set forth above. The stick 9 is sufficiently compressed to be retained within the chamber, but is not mechanically deformed [0199-0200]. Thus, Fuisz fails to disclose “wherein the smoking device is configured to flatten at least part of a portion of the capsule that contains the smoking material” per claim 15 and “a funnel that is configured to flatten…upon the capsule being inserted into the smoking device” per claim 17.
Jang is directed to an aerosol-generating device having improved heating efficiency (Title). The device includes an adapter (which reads on the “funnel” of claim 17 and the flattening of claim 15) which deforms a portion of an inserted article to a desired pressed shape, to improve heating efficiency (Abstract). The adapter 13 has a cross-sectional area which decreases from one end 131 to the other 132 ([0068], Fig. 6).
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 Fuisz to include Jang’s adapter 13 to deform a portion of Fuisz’s inserted stick 9 to a desired pressed shape, because both Fuisz and Jang are directed to aerosolization devices, Jang discloses that compressing the article shape improves heating efficiency, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 19, in view of Raichman ‘526 (WO 2019/005526 A1, provided in IDS dated 05/10/2023) and Raichman ‘188 (WO 2016/147188 A1, incorporated by reference in its entirety into Raichman ‘526, and also provided in IDS dated 05/10/2023.
Fuisz discloses the active contact semi-rings 14 which may include or be pogo pins with springs (“compression springs”), as set forth above. However, Fuisz fails to disclose “wherein: the smoking device comprises a button that is coupled to a gear track; and the smoking device is configured such that: insertion of the capsule requires the button to be pressed, and 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”.
Raichman ‘526 is directed to a vaporizing device (Title). Raichman ‘526 discloses a capsule-loading mechanism 56 with a button 23 (“button”) coupled to a pinion circular gear 43 and rack linear gear 49 (“gear track”) ([0101], Figs. 8B, 9B). In order to load a new capsule, the user must press the button 23 down (“insertion of the capsule requires the button to be pressed”) [0101]. Releasing the button 23 causes the system to reset and prepare for loading the next capsule [0103]. The mechanism 56 advantageously transfers capsules to a vaporization location 54 without requiring the user to handle the capsule [0053].
Raichman ‘526 also discloses an electrode-movement mechanism [0081], which is described in detail in Raichman ‘188 (WO 2016/147188 A1, incorporated by reference in its entirety into Raichman ‘526 at [0081]). Raichman ‘188 discloses the electrode-movement mechanism 120 including a button 122, springs 131, and electrodes (Raichman ‘188 at p. 31 l. 20-p. 32 l. 4). A user presses the button 122, which pushes the electrodes against the springs 131 and allows a capsule to be inserted into the vaporizer (p. 31 l. 31-p. 32 l. 1). Then the user releases the button 122, causing the springs 131 to press the electrodes onto the inserted capsule (“upon release of the button, the compression springs bring the electrodes into pressurized contact with the capsule”) (p. 32 l. 1-2). The mechanism 120 facilitates high-quality and low-resistance electrical contact between the electrodes and the meshes of the capsules (p. 31 l. 4-14).
Raichman ‘526 discloses that the electrode-movement mechanism may facilitate insertion of a capsule [0081], and therefore it would be obvious to combine the functionalities of the capsule-loading mechanism 56 and the electrode-movement mechanism. For instance, it would be obvious to provide a single button which is pressed to allow capsule loading, and then upon release causes springs to press electrodes onto an inserted capsule.
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 Fuisz by incorporating the capsule-loading mechanism 56 and electrode-movement mechanism of Raichman ‘526 into Fuisz’s device (either by coupling the mechanisms to Fuisz’s pogo pins 14 or by replacing the pogo pins 14 with the electrodes and springs 131 of Raichman ‘188), because both Fuisz and Raichman ‘526 are directed to vaporization devices, Raichman ‘526 teaches that this automatically transfers capsules for vaporization, Raichman ‘188 teaches that this facilitates high-quality and low-resistance electrical contact between the electrodes and the meshes of the capsules, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Double Patenting
Claim 7 of this application is patentably indistinct from claim 4 of Application No. 18/315,073.
Claim 8 of this application is patentably indistinct from claim 4 of Application No. 18/315,059.
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 7 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4 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.
Claim 8 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4 of copending Application No. 18/315,059 (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 1-6 and 8-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-14, 16-20 of copending Application No. 18/315,073 (reference application). Although the claims at issue are not identical (at least because the independent claims differ), they are not patentably distinct from each other because they are merely combinations and permutations of the same limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/315,073 (reference application) in view of Fuisz (US 2022/0218023 A1), Raichman ‘526 (WO 2019/005526 A1,), and Raichman ‘188 (WO 2016/147188 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious.
Reference claim 4 discloses all of the limitations of instant claim 1, but fails to disclose the limitations of claims 19-20.
Regarding claim 19, Fuisz discloses the pogo pins as set forth above in the prior art rejections under 35 USC 102-103. Before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify reference claim 4 by incorporating Fuisz’s pogo pins as the mechanism for bringing the electrodes into pressurized contact, because both the reference claims and Fuisz are directed to smoking devices, one of ordinary skill in the art would recognize that Fuisz’s pogo pins are a “mechanism” for enhancing electrode contact as recited in the reference claim, 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 20, Fuisz, Raichman ‘526, and Raichman ‘188 disclose the claimed limitations as set forth above, and it would be similarly obvious to combine them with the reference claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-20 of copending Application No. 18/315,063 (reference application). Although the claims at issue are not identical (at least because the independent claims differ), they are not patentably distinct from each other because they are merely combinations and permutations of the same limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/315,063 (reference application) in view of Fuisz (US 2022/0218023 A1), Raichman ‘526 (WO 2019/005526 A1,), and Raichman ‘188 (WO 2016/147188 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious.
Reference claim 3 discloses all of the limitations of instant claim 1 except the “metallic foil”. But one of ordinary skill in the art would expect the reference device to similarly be capable of receiving and providing current to a capsule with such a metallic foil. Reference claim 3 fails to disclose the limitations of claims 19-20.
Fuisz, Raichman ‘526, and Raichman ‘188 disclose the limitations of claims 19-20 as set forth above in the claim rejections under 35 USC 103, and it would be obvious to combine them with the reference claim similar to what is described above with regard to reference Application No. 18/315,073.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 9-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-20 of copending Application No. 18/315,059 (reference application). Although the claims at issue are not identical (at least because the independent claims differ), they are not patentably distinct from each other because they are merely combinations and permutations of the same limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/315,059 (reference application) in view of Fuisz (US 2022/0218023 A1), Raichman ‘526 (WO 2019/005526 A1,), and Raichman ‘188 (WO 2016/147188 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious.
Reference claim 4 discloses all of the limitations of instant claim 1, but fails to disclose the limitations of claims 19-20.
Fuisz, Raichman ‘526, and Raichman ‘188 disclose the limitations of claims 19-20 as set forth above in the claim rejections under 35 USC 103, and it would be obvious to combine them with the reference claim similar to what is described above with regard to reference Application No. 18/315,073.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16 of copending Application No. 18/315,052 (reference application). Although the claims at issue are not identical (at least because the independent claims differ), they are not patentably distinct from each other because they are merely combinations and permutations of the same limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/315,052 (reference application) in view of Fuisz (US 2022/0218023 A1).
Reference claim 3 discloses all of the limitations of instant claim 1 except the “metallic foil”. But one of ordinary skill in the art would expect the reference device to similarly be capable of receiving and providing current to a capsule with such a metallic foil. Reference claim 3 fails to disclose the limitations of claims 2 and 15-20.
Regarding claim 2, Fuisz discloses the same limitations, as set forth above. Before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify the reference claim to use a cylindrical stick and incorporate Fuisz’s chamber with cylindrical and non-cylindrical portions, because both the reference claims and Fuisz are directed to smoking devices, the air ducts 13 of the non-cylindrical portion allows air flow around the capsule (Fuisz [0182]), and this would involve combining prior art elements according to known methods to yield predictable results.
Regarding claim 19, Fuisz discloses the same limitations, as set forth above. Before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify reference claim 4 by incorporating Fuisz’s pogo pins as the mechanism for bringing the electrodes into pressurized contact, because both the reference claims and Fuisz are directed to smoking devices, one of ordinary skill in the art would recognize that Fuisz’s pogo pins are a “mechanism” for enhancing electrode contact as recited in the reference claim, and this would involve combining prior art elements according to known methods to yield predictable results.
Claims 15-16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/315,052 (reference application) in view of Fuisz (US 2022/0218023 A1) and Monticone (WO 2023/170182 A1).
Reference claim 3 fails to disclose the limitations of claims 15-16 and 18. Fuisz and Monticone disclose such limitations as set forth above, and it would similarly be obvious to combine them with the reference claim.
Claims 15 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/315,052 (reference application) in view of Fuisz (US 2022/0218023 A1) and Jang (EP 3,984,387 A1).
Reference claim 3 fails to disclose the limitations of claims 15 and 17. Fuisz and Jang disclose such limitations as set forth above, and it would similarly be obvious to combine them with the reference claim.
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of