DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-20 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Interpretation
An interpretation of Claims 1 and 9-12: “a capsule that contains a smoking material containing one or more active agents”.
Claim 1 recites an apparatus comprising a smoking device and configured/intended to be used with a capsule component, but does not explicitly disclose the capsule as a structural feature of the apparatus. Therefore, any recitations and limitations directed to the “capsule” component such as:
The metallic foil and paper covering in Claim 1
The capsule length range in Claims 9-12
is treated as an intended use of the claimed apparatus/smoking device, noting that the inclusion of material or article worked upon does not impart patentability to the claims, and that inclusion of the article formed within the body of an apparatus claim does not, without more, make the claim patentable (see MPEP § 2115).
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
"a mechanism configured to bring the electrodes into pressurized contact with the capsule" in Claim 4.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
Applicant’s Specification dated 10 May 2023, discloses a mechanism (230) comprising of one or more compression springs (232) to bring electrodes into pressurized contact with a capsule (see Specifications, Page 37, Lines 5-8).
Therefore, the limitation "a mechanism configured to bring the electrodes into pressurized contact with the capsule" is interpreted as "a mechanism such as compression springs are configured to bring the electrodes into pressurized contact with the capsule".
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
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, 4 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuisz et al (Publication No. US20220218023A1).
Regarding Claim 1, Fuisz discloses vaporizer (i.e., apparatus) for use with a capsule (Tobacco stick 9) that contains a smoking material (i.e., tobacco) containing one or more active agents [0181, 0204], comprising:
a smoking device (i.e., vaporizer) configured to receive the capsule (Tobacco stick 9) (Fig. 1; [0181]; the vaporizer is considered equivalent to the smoking device and apparatus as they serve the same function of receiving/using a capsule component);
the smoking device further comprising two or more electrodes (Active contact semi-rings 14/16) that are configured to vaporize one or more of the active agents from within the smoking material of the capsule (Figs. 5, 8, 9; [0183-0187, 0202-0204]; more than one semi-ring electrode 14 is shown where semi-ring 16 can also be configured to be an active semi-ring like component 14; the contact rings are considered to be electrodes as they are conductive and connects the battery to the heater);
the two or more electrodes being needle-shaped ([0136-0138]; discloses the contacts can be different shapes such as a pin which is considered to be equivalent to a needle-shape);
and configured to pierce the tipping paper (i.e., paper covering) of the tobacco stick/capsule [0121].
Regarding the limitations directed to the capsule’s metallic foil, it should be noted that the capsule and limitations directed to the capsule does not impart patentability to the claims and are treated as intended use of the claimed apparatus (see Claim Interpretation section). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (see MPEP § 2111.02).
In this case, Fuisz discloses the smoking device comprises of needle (i.e., pin) shaped electrodes, wherein the electrodes are configured to pierce the tipping paper of a tobacco stick/capsule to create an electrical circuit [0121, 0138]. Since Fuisz discloses all the structural features of the claimed apparatus, it is expected that said apparatus will also be capable of piercing a capsule and establishing an electrical circuit (i.e., in electrical contact) with a capsule’s metallic foil.
Regarding Claim 2, Fuisz further discloses the smoking device/vaporizer is configured to receive a cylindrically-shaped elongate capsule (9) (see Fig. 5; the tobacco stick 9 is shown to be cylindrical and elongate);
and wherein the smoking device comprises a cylindrically-shaped insertion port (Chamber 8) configured to receive the cylindrically-shaped capsule (9) (see annotated Fig. 4, Figs. 5-7; [0181-0182]; the chamber port allows installation/receiving of the capsule and is shown to be cylindrical in shape);
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and a non-cylindrical housing (1) configured to house at least part of a portion of the capsule (9) that contains the smoking material (i.e., tobacco), while the smoking material is heated (Figs. 3-4; [Abstract, 0181-0186]; the housing is shown to be non-cylindrical; the housing comprises the insertion chamber port for installing the tobacco stick/capsule for heating).
Regarding Claim 4, Fuisz discloses that the electrodes (14) are located on the flip cover portion (12) of the compound chamber (8) which receives the capsule (9) installed into said chamber and are configured to pierce (i.e., be in contact) with the capsule (9) (see Figs. 1-7; [0121, 0182-0183]).
Fuisz further discloses the smoking device comprises a mechanism such as a pogo spring pin (i.e., compression spring), configured to bring the electrodes into pressurized contact with the capsule, in order to enhance electrical contact between the electrodes and the capsule ([0138]; the pins are disclosed to allow the electrode contacts to pierce through the tobacco stick to establish electrical connection; this piercing via spring is considered equivalent to pressurized contact for establishing electrical connection).
Regarding Claims 11-12, Fuisz further discloses the smoking device/vaporizer is configured to receive a cylindrically-shaped elongate capsule (9) (see Fig. 5; the tobacco stick 9 is shown to be cylindrical and elongate).
Regarding the limitations directed to the capsule length, it should be noted that capsule and limitations directed to the capsule does not impart patentability to the claims and are treated as intended use of the claimed apparatus (see Claim Interpretation section). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (see MPEP § 2111.02).
In this case, Fuisz’s vaporizer is configured to receive and use a cylindrically-shaped elongate capsule/tobacco stick as recited in the instant claim. Therefore, it is expected that Fuisz’s vaporizer would also be capable of being used with an elongate cylindrically-shaped capsule/tobacco stick with a length of 15-150mm and 50-90mm.
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 et al (Publication No. US20220218023A1) as applied to Claim 1 above, and further in view of Ooyama et al (Publication No. US20170314094A1).
Regarding Claim 3, Fuisz does not disclose the electrodes (14/16) are configured to move axially along a length of the capsule.
However, directed to a heating apparatus (i.e., heater), discloses a pair of electrodes (13/14) that is movable along the length of a workpiece (W) via a moving mechanism (16) (Figs. 1A-1D; [0036, 0039]; the workpiece gets heated by the electrodes and therefore is considered equivalent to a capsule which is also heated by electrodes). The electrode pair is designed such that one set of electrodes (13) is movable and the other is stationary (14) so that when the moving electrode moves along the length of the workpiece (W), the electrical current can be adjusted based on the displaced distance of the electrode to result in substantial uniform heating (Figs. 1A-1D; [0048-0049]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the electrodes (14/16) disclosed by Fuisz to form sets of electrode pairs with a moving mechanism to move along the length of the capsule/workpiece as disclosed by Ooyama, as both are directed to a heater, where Ooyama teaches the advantage of using movable electrodes to uniformly heat a capsule/workpiece by adjusting the electrical current between electrode pairs based on the displaced distance [0049].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al (Publication No. US20220218023A1) as applied to Claim 1 above, and further in view of Rado (Publication No. US20150257443A1).
Regarding Claim 5, Fuisz discloses the smoking device comprises a control component (Control Unit 3) configured to:
receive an indication from a user via control button (4) indicating whether they wish to smoke the active agents [0201];
in response to receiving an indication that the user wishes to smoke the active agents (i.e., user activates button), heat the tobacco stick/capsule smoking material to a vaporization temperature of the one or more active agents for smoking/inhaling ([0201-0203]; discloses the heater heats the tobacco stick to vaporize the active substance).
Fuisz does not explicitly disclose a first and second mode wherein the controller:
receives 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.
Regarding (I-III), Rado, directed to a vaporizing apparatus for vaporizing active ingredients/agents [0003], discloses a controller (Control componentry 244) configured to supply power to a heating element (212) when it is triggered by a user pressing a button (250) ([0066]; button trigger to activate the heating element is equivalent to receiving a user indication to start the vaporizing process of an active agent);
wherein the controller is configured to switch between an automatic (i.e., first) and manual (i.e., second) operating mode based on the number of times the button is pressed by the user ([0071]; the number of button presses indicate which mode the user wants to use);
and in response to selecting the automatic (i.e., first) mode, the heating element is activated for a set time period of 10 seconds to vaporize an active ingredient/agent ([0003, 0070]; since the active ingredient is being vaporized, it is implicit that the heating element is heating at the vaporization temperature);
and in response to selecting the manual (i.e., second) mode, the heating element is activated to vaporize an active ingredient/agent while the button is actively depressed ([0003, 0068]; since the active ingredient is being vaporized, it is implicit that the heating element is heating at the vaporization temperature).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to configure the button and controller disclosed by Fuisz to change operational modes based on the button input as disclosed by Rado, as both are directed to a vaporizer apparatus, where this involves applying a known controller configuration for controlling operating modes as disclosed by Rado, to a similar vaporizing device disclosed by Fuisz and predictably yield a controller that allows Fuisz’s device to activate a heating element to vaporize active agents based on different operation modes.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al (Publication No. US20220218023A1) and Rado (Publication No. US20150257443A1) as applied to Claim 5 above, and further in view of Lim et al (Publication No. US20200221782A1).
Regarding Claim 6, Fuisz discloses that the control component can be configured to preheat a capsule/tobacco stick (9) below a vaporization temperature of an active substance/agent ([0070, 0201-0204, 0251-0252]; tobacco stick is heated to vaporize the active substance which is disclosed to be the same as the operating temperature; since the operation temperature is disclosed to be higher than the preheating temperature, it is implied that the preheating temperature is below the active ingredient/substance vaporization temperature).
Fuisz does not explicitly disclose the control component is configured to preheat the capsule containing smoking material, prior to receiving the indication from the user selection of the first or second mode.
However, Lim, directed to an aerosol generating device, discloses a controller (70) configured with a sensor (62) for detecting the insertion of a cigarette, wherein the controller will perform a preliminary heating (i.e., preheating) operation upon detection of insertion prior to a user input of a button (28) to minimize user stand-by time [0105-0107].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the device disclosed by Fuisz add and configure a cigarette insertion sensor with the controller to initiate a preheating cycle upon insertion detection as disclosed by Lim, as both are directed to an aerosol-generating device, where Lim teaches the advantage of using an insertion sensor and controller configuration for preheating to minimize user stand-by time [0105-0107]; this also involves applying a known sensor and controller configuration to a similar device to yield predictable results.
Regarding Claim 7, Modified Fuisz further discloses the control component is configured to preheat the capsule with smoking material to the temperature that is below the vaporization temperature of the one or more active agents automatically, in response to the capsule being inserted into the smoking device (Lim, [0105, 0107]; see Claim 6 for full modification justification; the preheating cycle is independent of user input via button which is considered equivalent to an automatic process).
Regarding Claim 8, Modified Fuisz further discloses 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, [0106]; see Claim 6 for full modification justification; discloses that the controller can also be configured to start preheating based on user input via button).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al (Publication No. US20220218023A1).
Regarding Claim 9, Fuisz further discloses the smoking device/vaporizer is configured to receive an elongate capsule (9) (see Fig. 5; the tobacco stick 9 is shown to be cylindrical and elongate). Fuisz does not explicitly disclose the following:
wherein during the heating of the smoking material, the smoking device is configured to house the capsule such that airflow through the capsule is substantially along a length of the elongate capsule;
and 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.
Regarding (I), Fuisz discloses that certain embodiments of their device is configured to substantially eliminate airflow on the sides and outer dimensions of the tobacco stick to maximize airflow through the tobacco stick itself [0064-0065]. If airflow on the sides is minimized, it would imply that a substantial portion of the airflow through the tobacco stick must be along the length of the elongate capsule instead of the sides. Therefore, one ordinarily skilled in the art, based on Fuisz’s disclosure, would implicitly understand that the device disclosed by Fuisz is configured to receive the capsule that maximizes airflow through the capsule lengthwise to minimize airflow on the sides of the tobacco stick and device chamber walls.
Regarding (II), it should be noted that one ordinarily skilled in the art in the field of circuitry, would be aware that current runs between two electrodes so long as there is a conductive track/component for an electrical current to run through. In this case, the resistive heater (10) comprising a longitudinal stripe heating surface (18) is disclosed to be a metal foil, where metal is well-known within the art to be electrically conductive (see Figs. 1-5; [0179, 0186]).
Therefore, it would have been obvious to one ordinarily skilled in the art that the electrodes (14) disclosed by Fuisz would drive current between said electrodes along the length of the capsule (9), as the electrodes are electrically connected to the heating element and its surface which are longitudinal stripes that run lengthwise on the capsule, where it is implied that the metal resistive heating element and its surface acts as the electrical path for the electrodes to drive current so that power from the battery can be supplied to said heating element.
Regarding the limitations directed to the capsule length, it should be noted that capsule and limitations directed to the capsule does not impart patentability to the claims and are treated as intended use of the claimed apparatus (see Claim Interpretation section). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (see MPEP § 2111.02).
In this case, Fuisz’s apparatus discloses the structural features of the electrodes, wherein the electrodes (14) are electrically connected to a heating element via the electrode contacts (17) disposed on either end of said heating element/surface in a longitudinal/lengthwise direction of the capsule (9) (see Figs. 1-5; [0179, 0186]; as stated above, it is implied that current is driven lengthwise as current will only occur between the electrodes via a conductive material which in this case is the longitudinal metal heating element and its surface).
Therefore, it is expected that Fuisz’s electrodes driving current between said electrodes along a length of the capsule of more than 5 mm in the axial direction (i.e., length direction).
Regarding Claim 10, Fuisz discloses the electrodes (14) and electrode contacts (17) provide power to the resistive heating element, and are positioned on opposite ends of the heating element’s (10) heating surface (18) (see Figs. 2-5; [0121, 0183-0186, 0250]; the electrodes couple with the electrode contacts which are shown to be located length-wise on the tobacco stick/capsule).
Fuisz does not explicitly disclose the first one of the electrodes is configured to drive the current toward the second one of the electrodes along a length of the tobacco stick/capsule (9). However, it should be noted that one ordinarily skilled in the art in the field of circuitry, would be aware that current runs between two electrodes so long as there is a conductive track/component for an electrical current to run through. In this case, the resistive heater (10) comprising a longitudinal stripe heating surface (18) is disclosed to be a metal foil, where metal is well-known within the art to be electrically conductive (see Figs. 1-5; [0179, 0186]).
Therefore, it would have been obvious to one ordinarily skilled in the art that the electrodes (14) disclosed by Fuisz would drive current between said electrodes along the length of the capsule (9), as the electrodes are electrically connected to the heating element and its surface which are longitudinal stripes that run lengthwise on the capsule, where it is implied that the metal resistive heating element and its surface acts as the electrical path for the electrodes to drive current so that power from the battery can be supplied to said heating element.
Regarding the limitations directed to the capsule length, it should be noted that capsule and limitations directed to the capsule does not impart patentability to the claims and are treated as intended use of the claimed apparatus (see Claim Interpretation section). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (see MPEP § 2111.02).
In this case, Fuisz’s apparatus discloses the structural features of the electrodes, wherein the electrodes (14) are electrically connected to a heating element via the electrode contacts (17) disposed on either end of said heating element/surface in a longitudinal/lengthwise direction of the capsule (9) (see Figs. 1-5; [0179, 0186]; as stated above, it is implied that current is driven lengthwise as current will only occur between the electrodes via a conductive material which in this case is the longitudinal metal heating element and its surface).
Therefore, it is expected that Fuisz’s electrodes driving current between said electrodes along a length of the capsule of more than 15 mm in the axial direction (i.e., length direction).
Claims 13-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al (Publication No. US20220218023A1) as applied to Claim 1 above, and further in view of Jang et al (Publication No. US20220110368A1, cited in IDS dated 22 August 2024).
Regarding Claim 13, Fuisz discloses that the electrodes (14) are located on the flip cover portion (12) of the compound chamber (8) which receives the capsule (9) installed into said chamber (see Figs. 1-7; [0182-0183]).
Fuisz does not disclose the electrodes are configured to change a shape of the capsule upon the capsule being inserted into the smoking device, by exerting mechanical pressure upon the capsule.
However, Jang, directed to an aerosol generation device/apparatus, discloses a cover (14) (i.e., flip cover portion) configured to press (i.e., exert mechanical pressure) an inserted aerosol generating article (2) (i.e., capsule) when closed, so that an aerosol generating substrate portion (21/22) changes to a flat shape (see Figs. 2, 5; [0053, 0059]; Figure 5 shows the article changing shape from a non-compressed cylindrical form to a pressed flat form). It is further disclosed that the flat shape portion may be rapidly heated to a target temperature, improve the initial taste of tobacco smoke, and increase vapor production [0053].
Examiner notes that while Jang does not explicitly disclose electrodes pressing on an aerosol-generating substrate, it is noted that Fuisz discloses a similar cover wherein the cover is disposed with electrodes. Therefore, if Fuisz’s cover is configured to press onto an aerosol-generating/tobacco substrate as disclosed by Jang, it is implied that the electrodes would also press onto the substrate by virtue of being disposed on the pressing cover.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the electrode and cover disclosed by Fuisz to be configured to press on the tobacco/aerosol-generating article when said cover with electrodes is closed as disclosed by Jang, as both are directed to a vaporizing/aerosol-generating apparatus, where Jang teaches the advantage of using a pressing cover to flatten a substrate, as the flat substrate will be rapidly heated to a target temperature, improve the initial taste of tobacco smoke, and increase vapor production [0053].
Regarding Claims 14-16, Modified Fuisz discloses the cover (12) (and subsequently the electrodes 14 on said cover) is configured to flatten at least a part of a portion of the capsule that contains the smoking material (Jang; [0053, 0059]; discloses that the aerosol substrate/smoking material portion of the aerosol-generating article/capsule is flattened).
Modified Fuisz does not explicitly disclose that the flattened portion of the capsule (9) defines a cross-sectional shape having a ratio of more than 2:1, 3:1, or 4:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape.
However, it should be noted that the courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP § 2144.05.II).
In this case, Jang discloses that the pressing cover can press on the aerosol-generating substrate (i.e., tobacco) portion of an aerosol-generating article/capsule such that the pressed diameter is within range of 10-50% of the original aerosol-generating article diameter [0057].
Therefore, one ordinarily skilled in the art can take the disclosed compression diameter range disclosed by Jang to routinely experiment and optimize the pressed tobacco portion of Modified Fuisz such that said pressed portion’s diameter results in a cross-sectional shape having a ratio of more than 2:1, 3:1, or 4:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape.
Regarding Claim 17, Fuisz discloses a flip cover portion (12) of the compound chamber (8) which receives the capsule (9) installed into said chamber (see Figs. 1-7; [0182-0183]). Fuisz does not disclose the smoking device is configured to flatten at least part of a portion of the capsule that contains the smoking material.
However, Jang, directed to an aerosol generation device/apparatus, discloses a cover (14) (i.e., flip cover portion) configured to press (i.e., exert mechanical pressure) an inserted aerosol generating article (2) (i.e., capsule) when closed, so that an aerosol generating substrate portion (21/22) changes to a flat shape (see Figs. 2, 5; [0053, 0059]; Figure 5 shows the article changing shape from a non-compressed cylindrical form to a pressed flat form). It is further disclosed that the flat shape portion may be rapidly heated to a target temperature, improve the initial taste of tobacco smoke, and increase vapor production [0053].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the flip cover disclosed by Fuisz to be configured to press on the tobacco/aerosol-generating article when said cover is closed as disclosed by Jang, as both are directed to a vaporizing/aerosol-generating apparatus, where Jang teaches the advantage of using a pressing cover to flatten a substrate, as the flat substrate will be rapidly heated to a target temperature, improve the initial taste of tobacco smoke, and increase vapor production [0053].
Regarding Claim 19, Modified Fuisz further discloses the smoking device comprises a funnel (Cover 12) that is configured to flatten at least part of the portion of the capsule that contains the smoking material upon the capsule being inserted into the smoking device (see Jang, Fig.3; when Fuisz is modified to have the cover configuration disclosed by Jang, said cover will form a funnel shape matching the aerosol-forming substrate/tobacco stick when the cover is closed as shown in Figure 3).
Regarding Claim 20, Modified Fuisz further discloses the smoking device comprises mechanical elements (i.e., Cover and hinge) that are configured to flatten at least part of the portion of the capsule that contains the smoking material by applying mechanical pressure (i.e., pressed) to the capsule (see Claim 17 rejection for modifying the cover to press/apply mechanical pressure on the smoking material/capsule; Fuisz, [0092]; discloses the cover further comprises mechanical bearings such as hinges which enable it to open/close; the hinge and cover are both considered mechanical elements as they cooperate to apply a mechanical pressing force).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al (Publication No. US20220218023A1) and Jang et al (Publication No. US20220110368A1, cited in IDS dated 22 August 2024) as applied to Claim 17 above, and further in view of Monticone et al (Publication No. US20250176625A1).
Regarding Claim 18, Modified Fuisz further discloses the smoking device comprises a cylindrically-shaped insertion port (Chamber 8) configured to receive the cylindrically-shaped capsule (9) (see annotated Fig. 4, Figs. 5-7; [0181-0182]; the chamber port allows installation/receiving of the capsule).
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Modified Fuisz does not disclose the smoking device comprises roller wheels that are configured to flatten at least part of the portion of the capsule that contains the smoking material upon the capsule being inserted into the smoking device.
However, Monticone, directed to an aerosol-generating device (1), discloses an oven (2) (i.e., compound chamber), insertion opening (i.e., insertion port), and compression device in front of the opening to compress an aerosol-generating article (10) (i.e., consumable) upon insertion into the aerosol-generating device (Fig. 1; [Abstract, 0045]). The compression device comprises of two compression rollers (6/8) (i.e., roller wheels) which rotate in different directions to compress/flatten the aerosol-generating article (10) while simultaneously transporting said article into the inner chamber of the oven (see Figs. 1-2; [0045-0046]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to substitute the pressing cover mechanism disclosed by Modified Fuisz with the roller pressing mechanism disclosed by Monticone, as both are directed to an aerosol-generating device, where Monticone teaches the advantage of using a roller compression mechanism to both flatten and also transport the aerosol-generating article/capsule [0046]; this also involves substitution of one known movement mechanism (i.e., pressing cover) with another known movement mechanism (i.e., compression rollers) to a similar device to yield predictable results (i.e., aerosol-generating article gets compressed).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 8-9 of copending Application No. 18/315,052. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an apparatus for use with a capsule, where the apparatus comprises a smoking device comprising electrodes configured to change a shape of the capsule, vaporize active agents in the capsule by driving a current through the capsule, and the electrodes are needled shaped for piercing a paper covering of the capsule.
The claims only differ in that provisionally rejected Claim 1 recites the smoking material is covered with a metallic foil and a paper covering whereas Claims 8-9 of copending Application No. 18/315,052 recite a capsule comprising a metallic foil surrounding a smoking material and a paper covering that covers the metallic foil.
Therefore, all of the elements of provisionally rejected Claim 1 and 13 are present and obvious over the conflicting Claims 1 and 8-9 of copending Application No. 18/315,052.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 19-20 of copending Application No. 18/314,321. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an apparatus for use with a capsule, where the apparatus comprises a smoking device comprising electrodes, vaporize active agents in the capsule by driving a current through the capsule, the electrodes are needled shaped for piercing a paper covering of the capsule, wherein the smoking device is configured with a cylindrically-shaped insertion port for receiving a cylindrically-shaped capsule, and a non-cylindrical housing configured to house a portion of the capsule.
The claims only differ in that provisionally rejected Claim 1 recites the smoking material is covered with a metallic foil and a paper covering whereas Claim 19 of copending Application No. 18/315,052 recite a capsule comprising a metallic foil surrounding a smoking material and a paper covering that covers the metallic foil.
Therefore, all of the elements of provisionally rejected Claim 1 and 2 are present and obvious over the conflicting Claims 1 and 19-20 of copending Application No. 18/314,321.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755